WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Donal Murtagh v. Gerard Murtagh
Case No. DIE2015-0006
1. The Parties
The Complainant is Donal Murtagh of Longford, Ireland, self-represented.
The Respondent is Gerard Murtagh of Westmeath, Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain names <donalmurtagh.ie> and <donalmurtaghmobility.ie> are registered with IE Domain Registry Limited ("IEDR").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2015 via email and in hardcopy on October 26, 2015. On October 26, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain names. On October 27, 2015, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details. On October 28, 2015, the Complainant made further submission to the Center.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 6, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was December 4, 2015. The Response was filed with the Center on December 3, 2015. On December 8, 9 and 14, 2015, the Complainant sent email communications to the Center.
The Center appointed Payne, Alistair as the sole panelist in this matter on December 17, 2015. 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 and Respondent are brothers who up until 2014 carried on business together, first as a partnership under the name or style, "Donal Murtagh Car Sales", and then through a company, Wheelchair Cars (Ireland) Limited. Following a complete breakdown in relations between the parties, this company was wound up and is now in liquidation.
A new company, Donal Murtagh Mobility Limited, was incorporated by a third party on December 3, 2014 with a view to continuing the type of business which the brothers had previously carried on, namely a business specialising in wheelchair accessible vehicles, vehicle adaptions and conversions for this purpose. The Complainant is employed by or involved in this business.
The Respondent continues to trade, as he says he has done since 2005, at his own premises in Glasson under the name or style, "Donal Murtagh" and "Wheelchair Cars Ireland" in the same or a very similar business. The Respondent registered the disputed domain names in his own name operating as a sole trader on March 11, 2015 with contact details listed as "Wheelchair Cars Ireland, Glasson Village, Athlone".
5. Parties' Contentions
The Complainant has no registered trade mark right but submits that he owns the trade name "Donal Murtagh" and that this name has through many years use developed a reputation in connection with his business and that this assertion is supported by the various letters from two car manufacturers, two foundations or organisations involved in disability support and extracts from two industry magazines.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names which he submits bear the Complainant's name. The Complainant submits that the disputed domain names do not correspond to the personal name or pseudonym of the Respondent. The Complainant says that through his solicitors he attempted to object to the Respondent's registration of the business name "Donal Murtagh Mobility" in March 2015, but without success.
The Complainant says that there is no legitimate basis for the use of his name by his brother and that he is using it in bad faith for the purpose of interfering with or disrupting the Complainant's business. The Complainant says that the Respondent is intentionally attempting to attract Internet users to a website which he has established and is intentionally creating confusion with prospective customers who know the Complainant's name and associate it with the market for wheelchair accessible vehicles.
The Respondent submits that the Complainant's birth/official name is actually Daniel Murtagh. He says that while the brothers were originally in partnership under the name or style, "Donal Murtagh Car Sales", the Respondent has and continues to trade in Glasson at the premises he owns under the name or style, "Donal Murtagh" and "Wheelchair Cars Ireland" since 2005.
He says that the Complainant is misleading in representing that the existing business is his own as the Complainant never incorporated Donal Murtagh Mobility Limited. This, asserts the Respondent, was done by the third party mentioned in paragraph 4 above who employed the Complainant as a salesman and who registered for relevant taxes and the garage code for trading motor vehicles with the Revenue Commissioner. Therefore, submits the Respondent, if the Complainant is trading for himself then he is doing so unofficially.
The Respondent submits that the name "Donal Murtagh" is widely recognized in the relevant target market, as this is the result of the partnership Donal Murtagh Car Sales, a business in which the Respondent says that he was the main investor and a partner. He says that "Wheelchair Accessible Vehicles by Donal Murtagh Cars" can be seen on hundreds vehicles around the country and that both he and his brother are well known in the target market under the umbrella of "Donal Murtagh Cars" or "Wheelchair Cars Ireland".
The Respondent says that contrary to the Complainant's assertions he is not trying to mislead people. It is rather the Complainant or his employers who are advertising the fact "We have moved" which the Respondent says is extremely misleading for customers as the Respondent is simply using the business name and reputation that he has spent ten years building and spent considerable money in marketing from the same address.
The Respondent submits that while the disputed domain names do not include his personal name, they carry his surname and are reflective of the years of work that he has carried out in Donal Murtagh Car Sales, which he says, led the way in mobility solutions for disabled people in Ireland. He says that the disputed domain names were registered to correspond with that business and to maximise his past investment in the previous jointly owned business under the same name. He notes that he is using the business names "Donal Murtagh" and "Wheelchair Cars Ireland" and that the Complainant is not carrying on any business in his own right.
The Respondent says that the disputed domain names were not registered and are not being used in bad faith. He says that the disputed domain names were registered as part of an expansion of his services and business and that currently <donalmurtaghmobility.ie> is not active and forwards to <wci.ie>. It has not been submitted to search engines and at present he says that it is not advertised and that <donalmurtagh.ie> does not re-direct anywhere or contain any content. The Respondent says that the page remains as a placeholder page that is generated by the company through which he registered the disputed domain names. He further says that the web pages to which the disputed domain names will eventually resolve are an active work in progress and form part of his overall business strategy.
The Respondent submits that this Complaint was brought in bad faith and constitutes an abuse of the administrative proceedings. This Complaint, says the Respondent, contained information that was misleading and false and is an attempt by the Complainant to sabotage the Respondent's business expansion plans of which the Complainant had knowledge. The Respondent says that the Complainant, as a domain name administrator for Donal Murtagh Mobility Limited, registered the domain name <wheelchaircars-ireland.ie> on October 16, 2015 after the submission of this Complaint in order to mislead customers away from his website at "www.wheelchaircarsireland.ie" and says also that the Complainant advertises on his employer's website that "Wheelchair Cars Ireland" has moved location for a similar purpose.
6. Discussion and Findings
The Complainant made further limited submissions by email on December 8, 9 and 14, 2015 and after the due date for the Response. Panels generally only accept additional filings to the record in the event that there are exceptional circumstances for doing so or that these filings add new or material information that should be included in the interests of fairness. In this case, the Panel exercises its discretion under the Rules not to admit these filings to the record as there are no exceptional circumstances cited by the Complainant to support their admission and in any event they add nothing to the determination of the key issues as set out in the Panel's decision below.
A. Identical or Confusingly Similar
The Complainant does not own registered trade mark rights in a mark that correspond to or which are incorporated in either of the disputed domain names. He however asserts that he owns rights at common law to the trade name "Donal Murtagh" as a consequence of use and reputation and that this name is wholly incorporated into each of the disputed domain names.
Under paragraph 1.1.1 of the Policy, the first issue which the Complainant must establish is that it has rights in a "protected identifier". A "protected identifier" may under paragraph 1.3.1 be trade mark or a service mark that is protected in the island of Ireland or, under paragraph 1.3.2, a personal name (including a pseudonym) in which the Complainant has acquired a reputation in the island of Ireland.
Under either paragraph registration is not required, however previous panels under the Uniform Domain Name Dispute Resolution Policy (UDRP)1 have considered in numerous cases what is required to demonstrate rights in an unregistered mark or trade name as is outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). The consensus of prior panels under the UDRP is relevantly set out under the heading: "1.7 what needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?"
"Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such 'secondary meaning' includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition..."
Panels have historically been reluctant to make a finding of unregistered trade mark rights unless it is clear on the evidence before the panel that there has been clear and substantial use made of the trade mark or trade name at issue.
The wording of paragraph 1.3.1 of the Policy requires a complainant to demonstrate that the unregistered name or mark would be protected in Ireland. The Panel interprets this to mean that the unregistered name or mark therefore has goodwill and reputation attaching to it such that it would be protected by the law of passing-off in Ireland. However, paragraph 1.3.2 of the .ieDRP arguably requires a lesser standard in that, on its face, it merely requires that a complainant has acquired a "reputation" in Ireland in his or her personal name. It seems to the Panel that the fundamental base requirement under paragraph 1.3.2 must at the least be for a complainant to be able to demonstrate that a degree of commercial reputation attaches to their personal name at the date on which the complaint is filed.
The only evidence before the Panel in this case of commercial reputation attaching to the Complainant's name are letters from two car manufacturers and from two foundations or organisations involved in disability support and extracts from two industry publications and an acknowledgement by the Respondent in its submissions that the Complainant has been known by this name in the course of the business that they operated together. While this might suggest that the Complainant is, or at least was, known in trade as "Donal Murtagh", there is no evidence that the Complainant currently operates a business in his own right under this name. Further, there is no evidence that rights in the trading name in the business previously owned by the brothers, passed to him or to the company for which he now appears to work.
Based on the parties submissions it seems that the business that the parties jointly operated under the name or style, "Donal Murtagh Car Sales" and then through a company, Wheelchair Cars (Ireland) Limited, was wound up in or around 2014. There is no evidence that the goodwill of this business that supports that company's trading name (i.e. the name "Donal Murtagh Car Sales") was then transferred to the Complainant.
In addition it is unclear whether the Complainant has since that time operated in business in his own right, or in partnership with anyone else as "Donal Murtagh" or under any similar name. It appears to the Panel, based on the Respondent's submissions which are unchallenged by the Complainant that the Complainant is more likely than not an employee of a company set up in 2014 called Donal Murtagh Mobility Limited. This company appears to have been set up by a third party after the brothers' business was wound up and based on the company records that are in evidence before the Panel, the Complainant is neither a shareholder nor a director of this company and the company itself is not a party to this proceeding.
In these complex circumstances and without the benefit of additional evidence, the Panel declines to determine whether or not the Complainant has the required "reputation" in the Donal Murtagh name under paragraph 1.3.2 of the Policy. However, for the reasons set out under Part B below it is unnecessary to make a finding under this element of the Policy.
B. Rights in Law or Legitimate Interests and Registered or Used in Bad Faith
The Panel finds that the Complainant has not made out its case as it is required to do that the Respondent has "no" rights in law or legitimate interests in the disputed domain names, or of registration or use in bad faith by the Respondent of the disputed domain names.
In view of the prior jointly owned business built up by the parties under the "Donal Murtagh" trading name, the lack of evidence on the record as to whether the goodwill attaching to this trading name was ever transferred to the parties and the subsequent development from the original joint business's location of the Respondent's current business under the "Donal Murtagh" trading name, it cannot, in the Panel's view, be said that at the date of registration of the disputed domain names, the Respondent has "no" rights in law or legitimate interests in the disputed domain names. It follows on from this finding and in all of the circumstances as outlined under Part A above, that there is also in the Panel's view insufficient evidence to support the Complainant's claim of registration of the disputed domain names in bad faith, or indeed that the Respondent has used the disputed domain names in bad faith.
The circumstances of this family based business dispute are involved and obviously hotly contested and the matter is made more complicated by the fact that the Complainant's personal name (although it appears not his legal birth name) is involved. Further the parties are self-represented and the Panel comprehends that it can be difficult without professional representation to understand the niceties of the legal issues involved (which the Panel notes are in any event complex and are really much more suitable for determination by a court rather than in this forum) and the extent of the evidentiary burden carried by a complainant under the Policy. Accordingly, the Panel does not consider that this is a case in which it is appropriate to make a finding of reverse domain name hijacking and declines to do so.
For the foregoing reasons, the Complaint is denied.
Dated: December 31, 2015
1 The Panel notes that the Policy is, with some exceptions, substantially similar to the UDRP and, as such, the Panel finds it illustrative to reference the UDRP under this heading.