Complainant is Royal Automobile Club of Victoria (RACV) Ltd., Australia, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. On August 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2019.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on September 17, 2019. 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
Complainant was established in 1903 and is a motoring club and mutual organization with a range of products and services in the areas of motoring and mobility, home, leisure, financial services and general insurance. Complainant now has more than 2.2 million members and is the largest member organization in Victoria, Australia. Complainant is the owner of numerous trademark registrations across various jurisdictions for the mark RACV, including the following:
RACV
AU/IPAU
710060
August 16, 2000
RACV
AU/IPAU
812796
November 24, 2000
RACV
AU/IPAU
1146525
June 25, 2007
Complainant maintains its Internet presence through the website found at and in various social media platforms including Facebook, Instagram and Twitter. Complainant’s registration of its domain name occurred on August 30, 1996.
The original registration of the disputed domain name was November 6, 2009, which is significantly after Complainant’s first use in commerce of its trademark and Complainant’s registration of its domain name on August 30, 1996. The disputed domain name redirects to a website featuring links to third-party websites, some of which directly compete with Complainant's business. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s RACV trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
Complainant has demonstrated that it has rights in the trademark RACV. The disputed domain name incorporates Complainant’s mark in its entirety with the additional, descriptive term “insurance”, which relates to the products and services offered under Complainant’s RACV trademark. The term “insurance” does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Complainant contends that it is difficult to ascertain when Respondent first gained possession of the disputed domain name as the registration has been masked for several years through the use of privacy services. Even though the original registration of the disputed domain name was November 6, 2009, the record indicates that this date is many years after Complainant began using its RACV trademark and many years after Complainant began using its own domain name . Complainant asserts and the evidence indicates that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent license, authorization or permission to use Complainant’s trademark in any manner, including in domain names. There is no evidence in the record indicating that Respondent is commonly known by the disputed domain name. The pertinent WhoIs information identifies Registrant as “Domain Administrator, Fundacion Privacy Services LTD”, which does not resemble the disputed domain name.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. For example, the website at which the disputed domain name resolves features multiple third-party links for “car insurance quote”, “motor insurance”, and “cheapest car insurance Australia”. Respondent presumably receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website.
Moreover, the disputed domain name is listed for sale at Sedo for a minimum offer of USD 500, an amount which appears to be in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The record indicates that Complainant’s RACV trademark is widely-known, with several trademark registrations in Australia. The record also indicates that at the time of registration of the disputed domain name, Respondent likely knew or at least should have known of the existence of Complainant’s trademark. Complainant was established more than 115 years ago and has more than 2.2 million members. Performance of searches across several Internet search engines for “racv insurance” returns multiple links referencing Complainant and its business.
Respondent has created a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates Complainant’s RACV trademark along with the descriptive term “insurance” associated with Complainant’s services, which demonstrates that Respondent is using the disputed domain name to confuse Internet users looking for Complainant’s services and to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain name, Respondent has demonstrated an intent to capitalize on the fame and goodwill of Complainant’s trademark in order to increase traffic to the disputed domain name’s website for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent’s website.
There is no evidence in the record indicating a plausible good faith reason for Respondent to have registered or used the disputed domain name.
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 7. Decision
For 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 be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: October 1, 2019
Full & Egal Universal Law Academy