WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Simon Buckley on behalf of the Road Safety Authority v. Adrian Demian and Peter Heuston

Case No. DIE2012-0001

1. The Parties

The Complainant is Simon Buckley of Ballina, Ireland, represented by Philip Lee Solicitors, Ireland.

The Registrants are Adrian Demian and Peter Heuston of Dublin, Ireland, represented internally.

2. The Domain Name and Registrar

The disputed domain name <drivinglicence.ie> is registered with IE Domain Registry Limited (the “Registry”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2012. On August 24, 2011, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On September 3, 2012, the Registry transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Registry also indicated that Peter Heuston was also the Registrant of the disputed domain name. In response to a notification by the Center of formal deficiencies in the Complainant, the Complainant filed an amended Complaint on September 4, 2012. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “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 Registrants of the Complaint, and the proceedings commenced on September 13, 2012. In accordance with the Rules, paragraph 5.1, the due date for Response was October 11, 2012. The Response was filed with the Center on October 10, 2012.

The Center appointed Adam Taylor as the sole panelist in this matter on October 18, 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. Preliminary Matters

The Complaint is filed in the name of “Simon Buckley on behalf of the Road Safety Authority”. The connection between the Road Safety Authority (“RSA”) and Simon Buckley has not been explained. Nor is it clear why the RSA itself is not named as Complainant. Had the Complaint not failed on other grounds, it would have been necessary to scrutinise whether the Complainant had been correctly named. In view of the outcome, however, the Panel will proceed on the basis that the Complainant and the RSA are one and the same.

The Registrants are the partners in a partnership and hereafter are collectively referred to as “the Registrant” unless there is a reason to refer to them separately.

5. Factual Background

The Complainant, a body established by the Irish Road Safety Authority Act 2006, has sole authority and competence in Ireland for oversight of the driving licensing system, including management of the driving test, development of driver licensing policy and drafting licensing legislation.

The disputed domain name was registered by the Registrant on September 23, 2011.

On March 29, 2012, the Complainant telephoned the Registrant asking if it would transfer the disputed domain name to it. The Registrant stated that the disputed domain name would be used for a project that was 90% complete, that it was not “looking to sell” but that “everything has a price”. The Registrant said that a sale would disrupt its plans and that it would not be interested unless there was “a serious bid” of EUR 10,000. The Complainant made reference to a potential claim via the IEDR but asked for an email to be sent giving the Registrant’s best price and the Complainant would then make a decision as to how to proceed.

At some point thereafter a website appeared at the disputed domain name stating “Coming Soon …. We’re preparing a surprise (scheduled to launch on April-May 2012)” together with a navigation bar with buttons “LEARN TO DRIVE”, “THEORY TEST” and “SIGN UP”.

The parties exchanged emails on March 29, 2012, summarised as follows:

The Complainant stated that it required the disputed domain name as part of its core business and asked how to go about transferring it to the Complainant.

The Registrant said that it could not transfer the disputed domain name because it had invested approximately EUR 12,000 to EUR 15,000 in developing it and that the site would be launched in 1-2 months. The Registrant invited the Complainant to visit the website at the disputed domain name.

The Complainant asked if the work would dovetail with that of the Complainant and enquired what kind of service the site would provide.

The Registrant stated that “our website will be a complete commercial online learning solution for clients looking to prepare better for their theory test and also for the driving test. We will also provide a listing of all driving instructors with multiple facilities.” The Registrant asked for details about the Complainant’s proposed product / service, stating that it did not want to create any conflict.

On March 30, 2012, the Complainant asked for the minimum price at which the Registrant would be willing to sell the disputed domain name to the Registrant.

6. Parties’ Contentions

A. Complainant

Identical or Misleadingly Similar

The Complainant has made longstanding use of the term “driving licence” since its establishment in 2006 and therefore asserts unregistered trade mark rights in this term. The term has become a distinctive identifier associated with the legislative role of the Complainant. This is evidenced by the advertising materials used by the Complainant on its website to market its role in the overall responsibility for driver licensing in Ireland. This is also evidence from the significant media coverage accorded to the Complainant’s role.

The Complainant has made extensive use of the term “driving licence” on “www.rsa.ie” and “www.rulesoftheroad.ie”. The sites have received a significant volume of traffic, including 55,514 page views from August 2011 to August 2012.

The website “www.rsa.ie” ranks first and second for Google.ie searches for “driving licence” and it ranks third and fourth for searches for “drivinglicence”.

While the term “driving licence” may be highly descriptive, the Complainant’s use of the term has acquired the requisite level of distinctiveness and constitutes a protected identifier in order to confer unregistered trade mark rights on the Complainant in respect of this term.

Rights or Legitimate Interests

The Complainant is spear-heading a change to the driver licensing system, a key platform of which is the offering of driver testing / licensing processes and information via an online portal. The disputed domain name would be most appropriately used by the Complainant in connection with all of its driving test and licence functions, and the Complainant is the most legitimate user of the disputed domain name.

As at the date that the Complainant’s first contacted the Registrant, there was no evidence of the Registrant’s bona fide use of the disputed domain name in connection with any genuine business or of any demonstrable preparation to begin using it. There was no content on the relevant web page. However, after the Complainant’s first communication with the Registrant, a temporary web page was applied to the disputed domain name by the Registrant.

Unlike the Complainant, the Registrant has no rights in law and/or no legitimate interest in the disputed domain name, for the following reasons.

The use and/or operation of the disputed domain name indicates that the relevant website is being operated by a body that is authorised in law in Ireland to regulate, oversee and manage the driving licence system, i.e., the Complainant.

Unlike the Complainant, the Registrant has no such legal authority to offer driving test services or provide related information to the public. On the Registrant’s website, the disputed domain name is purportedly identified as being owned by a business called “Ennovation”. This is a registered business name which is listed as being operated by the Registrant and is not authorised in any way by the Complainant or any other official body in connection with driver testing or licensing services. Rather, its registered business is that of “web design”.

As such, the Registrant nor any business or person connected with it can have any legitimate reason to use the disputed domain name.

The Registrant’s email of March 29, 2012 underlines the lack of any legitimate interest on the part of the Registrant in its registration and proposed use of the disputed domain name. The Registrant is not authorised by the Complainant for the stated purposes, and in particular not as an approved driving instructor which is the key qualification in terms of providing instruction and information to any driving test hopeful, nor as a licensee in connection with the driver theory test. The Registrant could therefore have no legitimate interest in using the disputed domain name as it has no business purporting to provide information about these activities which are controlled by the Complainant, when the Registrant is not licensed, approved or endorsed by the Complainant to do so. The basis of the Registrant’s purported provision of the supposed information to the public is therefore highly questionable, and it should not be endorsed in doing so by being permitted to operate under the disputed domain name.

In addition, the full list of approved driving instructors is licensed, administered and published by the Complainant on the Complainant’s own website. This is the sole location for the active list of driving instructors in Ireland. The list purported to be offered by the Registrant could only be extracted from the Complainant’s website. In extracting and republishing this information, the Registrant would be doing so without licence, in potential breach of the Complainant’s copyright and database rights. This listing is also likely to be in breach of data protection law it would involve the processing of the driving instructors’ personal data without consent or without any official authorisation and so would not be legitimate processing of data under the Data Protection Acts 1988 and 2003.

Registered or Used in Bad Faith

In light of the Complainant’s powers and functions, and of the type of information which the Registrant intends to communicate via the website, there exists a significant probability that the public will be deceived into thinking that the Registrant’s website is associated with the Complainant or is authorised, endorsed and/or approved by the Complainant. This is particularly so given that, although the Registrant may argue that the disputed domain name is “generic” and/or “descriptive” and therefore should be open to anyone to use, the disputed domain name is uniquely positioned to describe precisely the activities of the Complainant. Those viewing the disputed domain name will consider that it is apt (and only apt) to refer to the activities of the Complainant as the only authorised body to regulate driving tests and consequent licences and so the operator of the disputed domain name must have an official association of some kind with the Complainant.

As a consequence of the anticipated public understanding of who is the likely operator of the disputed domain name (i.e., the Complainant or someone authorised, endorsed and/or approved by or associated with the Complainant), the disputed domain name as registered to the Registrant, if used by the Registrant, will interfere with and disrupt the business of the Complainant. The use of this disputed domain name is key to the Government-approved project set out above.

The disputed domain name may have been registered with a view to selling, renting, licensing or otherwise transferring the registration to the Complainant for valuable consideration in excess of the Registrant’s documented expenses which are directly related to the registration of the disputed domain name. Specifically, in a telephone call with the Registrant and an officer of the Complainant, the Registrant proposed a price for sale of the disputed domain name to the Complainant of EUR 10,000 “plus”. This, the Registrant claimed, was on the basis of the Registrant’s business having put together a product around the name. In relation to the claims made by the Registrant in this telephone conversation, as above, the Complainant can find no evidence of any preparations or investment by the Registrant or his business to launch any website or product/service offering using the disputed domain name, save for the bare website that was put up after the Complainant had contacted the Registrant. Further, the business purporting to operate this website is only registered for web design services and not to operate any products or services concerning or relating to driving licensing or anything similar. Finally, it is very difficult to credit the Registrant’s assertions that its business intends to launch a product/service around this disputed domain name – it is highly unlikely, in the Complainant’s view, that the Registrant’s business could charge users for any information services that might appear on the website since all relevant information about the Irish driving tests (theory and practical) is available on the Complainant’s own website. Further, the Registrant will not have permission to extract copyright and database right protected material from the Complainant’s website. On that basis, the Complainant does not consider that the Registrant has any bona fide intention of using the disputed domain name and it can only have been registered in bad faith.

B. Registrant

Identical or Misleadingly Similar

The Complainant was free to register the disputed domain name from its inception in 2006 until the date of registration by the Registrant.

The Complainant is using a few thousand keywords on “www.rsa.ie” and it is impossible for it to own all the domain names correlating to those words.

The Complainant cannot acquire rights over a specific name by simply providing proof of search engine rankings.

The Complainant already uses “www.rsa.ie” as its main website for customers and that is where the public expect to find all information relating to driver licensing in Ireland.

The Complainant has no trade mark or service mark rights which are identical or confusingly similar to the disputed domain name.

Rights or Legitimate Interests

The Complainant’s role overseeing the driving system in Ireland, and its future plans, have nothing to do with the Registrant’s rights or legitimate interests in the disputed domain name.

The Registrant has prepared a large part of its site but it has not been launched as there has been a delay in arranging for an accredited driving instructor to film the lessons.

The website was uploaded as an indication that the Registrant was actively working on the website. This had commenced prior to any communication from the Complainant. The Registrant did not register the disputed domain name to provide physical driving test services. Rather it was intended to be a complete online learning solution for those wishing to prepare for the theory test and driving test. The website will be a complete video tutorial together with a directory of driving schools. The learning materials will be provided by a well-known driving school, not the Registrant

The Registrant does not need authorisation from the Complainant or anyone else to offer such services.

The Registrant has not infringed any intellectual property rights of the Complainant and has no intention of doing so.

The Complainant has breached data protection law by recording the telephone conversation without consent.

The Complainant is totally incorrect to suggest that the Registrant’s business is not legitimate. The claims are based on false assumptions on the part of the Complainant.

Registered or Used in Bad Faith

There is no likelihood that the public will be deceived as the proposed services have nothing to do with the Complainant’s role and the Registrant does not need to be officially authorised by the Complainant to do what it intends.

The name of the disputed domain name is directly relevant to the Registrant’s proposed website as it is about “getting to your driving licence”.

It was the Complainant which suggested sale of the disputed domain name in the initial telephone conversation.

The Registrant has been bullied by the Complainant.

7. Discussion and Findings

The Panel notes that the Policy is similar in many respects to the Uniform Domain Name Dispute Resolution (“UDRP”) and, as such, deems it appropriate to refer to authority concerning the Policy and the UDRP when deciding this dispute.

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a “Protected Identifier” in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, Protected Identifiers include, among others, “trade and service marks protected in the island of Ireland”. The Complainant relies on unregistered trade mark rights in the term “driving licence”.

According to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view is that, in order to establish an unregistered trade mark for the purposes of the UDRP, a complainant:

“must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition[.]”.

The panel in Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002 considered that this approach applied equally to the Policy.

Paragraph 1.7 of WIPO Overview 2.0 also states that:

“Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.”

It is immediately apparent that the Complainant faces a steep uphill task in demonstrating that the descriptive, dictionary term “driving licence” has in any sense become distinctive of the Complainant. Indeed, the Complainant acknowledges that the term is highly descriptive but nonetheless claims that it has acquired the requisite level of distinctiveness. In support, the Complainant invokes use of that term on its websites at on “www.rsa.ie” and “www.rulesoftheroad.ie”, which have allegedly received a high volume of visits. By way of example, the Complainant has exhibited the “Licensed Drivers” section of “www.rsa.ie”, including topics such as “The driving licence – What to do if your licence gets lost or stolen …” and “About your licence – What you need in order to apply for or renew a driving licence …”

But the Complainant has not explained how such descriptive usage of the term “driving licence” can be seen as referring to anything other than the document embodying the permission granted to an individual to drive a vehicle. As one might expect, there is no evidence to suggest that the term has been used in some extended sense to denote, not just the permission itself, but also the authority which currently oversees the granting of such permission in the Republic of Ireland, or its services. Indeed the identity of the Complainant is clearly and separately represented by means of its own name and logo, with which its website is branded.

Although the Complainant has not provided any evidence supporting its assertions concerning the quantity of traffic to its website, the volume of visitors is in fact immaterial in the absence of any evidence of use by the Complainant of the term in a manner which is capable of distinguishing the Complainant from other entities.

The Complainant also relies on media coverage accorded to the Complainant’s role as well as Google.ie results showing that its website “www.rsa.ie” ranks very highly for searches against “driving licence”. But, again, the Panel sees nothing whatsoever in those materials at coverage which suggests that the descriptive term “driving licence” has become is in some way distinctive of the Complainant itself.

In light of the lack of highly descriptive nature of the term “driving licence”, and the lack of any evidence showing that it has been used in a way which has become a distinctive identifier associated with the Complainant or its services, the Panel finds that it does not have sufficient information to conclude – even prima facie – that the term is, or has become, distinctive of the Complainant and/or its services.

The Panel concludes that the Complainant has failed to establish the existence of a “Protected Identifier” under paragraph 1.1 of the Policy.

In light of the Panel’s finding above, it is unnecessary to address the second and third factors of the Policy in any detail. The Panel stresses that this Decision is not intended to prejudge any other proceeding, and this Decision does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court if it considers that it has grounds to do so.

8. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Dated: November 7, 2012