WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Daft Media Limited v. Daft Motors Limited Case No. DIE2009-0005 1. The Parties
The Complainant is Daft Media Limited of Dublin, Ireland, represented by Maples and Calder, Ireland.
The Registrant is Daft Motors Limited of Naas, Ireland, represented by Reidy Stafford Solicitors, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with the IE Domain Registry Limited (the “IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On October 14, 2009, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Registrant of the Complaint, and the proceeding commenced on October 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. On November 23, 2009, the Center received an email communication from the Registrant's authorized representative, indicating that the Registrant may wish to settle the dispute. The Center acknowledged this communication, and reminded the Registrant of the due date to submit any formal Response. On November 26, 2009, the Center received an email from the Complainant, indicating that it did not wish to suspend the case in order to discuss settlement options with the Registrant. Accordingly, the Center notified the Registrant's default on November 26, 2009.
The Center appointed John P. Gaffney as the sole panelist in this matter on December 21, 2009. 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.
On Wednesday, December 23, 2009 the Center issued, on behalf of the Panel, Panel Order No. 1, in which the Registrant was requested by the Panel (mindful of the timing of the communications between the parties in November 2009) to forward any reply it may have to the Complaint to the Center and the Complainant by no later than Wednesday, December 30, 2009. The Registrant did not submit a reply in response.
On Friday, January 8, 2010 the Center issued, on behalf of the Panel, Panel Order No. 2, in which the Registrant was requested to explain the circumstances which enabled it to register the disputed domain name in the “Corporate Name” category under the Registration Policy for .IE domain names (in advance of the apparent date of its incorporation). The IEDR was also invited to comment on the subject of this Panel Order if it so wished, and was therefore copied for reference. The Registrant did not respond to Panel Order No. 2. The IEDR submitted a response to Panel Order No. 2 on January 11, 2010. 4. Factual Background
The Complainant says that it specialises in the provision of on-line classified advertising and the provision of on-line advertising space.
The Complainant asserts that its total turnover was EUR 1,566,318 for the 18 month period ending December 31, 2006, EUR 3,723,972 in 2007 and EUR 5,776,594 in 2008.
According to the Complainant, its flagship title, “”, attracts more than 1.275 million unique visitors and delivers more than 103 million page impressions per month.
The Complainant owns a Community Trade Mark (“CTM”) bearing the CTM registration No. 004621991 for the mark DAFT registered on September 12, 2006 in respect of classes 35, 36 and 42.
The Registrant registered the disputed domain name on January 19, 2009 under the category of “Corporate Name”.
As of the date of the Complaint, there was a motor advertising website at the disputed domain name branded “Daft M”. 5. Parties' Contentions A. Complainant Identical or Misleadingly Similar
The Complainant is the owner of a registered CTM for the word DAFT. As the CTM DAFT is protected on the island of Ireland, it constitutes a protected identifier.
The Complainant has also acquired common law rights in the name DAFT as a protected identifier by virtue of its trading activities under that name since 2000.
The Complainant has active websites at the address , as well as other associated domain names, including , and .
The Complainant says that DAFT is a non-descriptive mark in which it has acquired considerable goodwill and reputation. The Complainant has listed several awards which attest to the strength of its brand and online activities. The Complainant says that it is therefore inconceivable that the Registrant is not aware of the Complainant's reputation in the island of Ireland.
The names Daft and Daftmotors are confusingly similar. The disputed domain name differs from the protected identifier only by the addition of the generic word “motors”. Any use of the disputed domain name is likely to cause Internet users to perceive a connection between the Complainant and Registrant's business. Rights or Legitimate Interests
The Complainant considers that the name Daft is an instantly recognisable brand name in Ireland, automatically associated with the Complainant. The domain name has been in use by the Complainant (incorrectly stated in the Complaint to be “by the Registrant”) since 2000 and the mark DAFT has been a registered CTM since 2006.
The Complainant has not licensed or otherwise authorised the Registrant to use its trademark.
The Complainant says that the Registrant has never previously been associated with the protected identifier and has no rights or legitimate interests in respect of the disputed domain name. The Registrant cannot demonstrate that before being on notice of the Complainant's interest in the disputed domain name, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of good or services or operation of a business. The Registrant was incorporated primarily to fulfil the supporting information requirements of the Registration Policy of the IEDR. Registered or Used in Bad Faith
The Complainant stated that it is highly protective of its brand and reputation. The Complainant states that it spends approximately EUR 3 million per annum on the promotion and development of its business.
On September 17, 2009 the Complainant instructed its solicitors to send a cease and desist letter to the Registrant. The Registrant responded on September 22, 2009, inviting the Complainant to a meeting to discuss the issue, but identifying no correlation between the disputed domain name and a personal name or pseudonym of the Registrant. The Complainant rejected the offer of a meeting as it felt this was an invitation for the Complainant to make a financial offer to purchase the disputed domain name.
The Complaint states that on October 6, 2009, the Registrant's solicitors telephoned the Complainant's solicitors, querying whether the Complainant would be interested in reaching a “commercial agreement” that would involve the Complainant working with the Registrant to help it develop the Registrant's website. This offer was rejected by the Complainant.
The Complainant considers that during these negotiations, the Registrant failed to provide a reasonable explanation for its choice of domain name. This has led the Complainant to conclude that the registration of the disputed domain name amounts to an intentional attempt by the Registrant to attract Internet users to its website by creating confusion with the Complainant's protected trademark and acquired reputation.
The Complainant asserts that it is obvious that the Registrant must have had knowledge of the Complainant's trade mark when it registered the disputed domain name. The Complainant had been operating a significant online classified advertisements business under the name DAFT in Ireland for some ten years before the registration of the disputed domain name. It is therefore highly probable that the Registrant only chose the disputed domain name, including the distinctive mark DAFT, for its classified advertisements website with the Complainant's trade mark very much in mind. It is highly probable that the use of the Complainant's trademark DAFT by the Registrant will seriously dilute and damage the reputation of the Complainant. On this basis, the Complainant believes the Registrant registered and operates the disputed domain name in bad faith. B. Registrant
The Registrant did not reply to the Complainant's contentions. 6. Discussion and Findings
The Registrant's failure to reply in this administrative proceeding does not automatically result in a decision in favour of the Complainant. The Panel has proceeded on the basis that while the Panel may draw negative inferences from the Registrant's default, “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 [of the Policy] are met.” (Paragraph 1.4 of the Policy). The Panel views paragraph 1.4 of the Policy as requiring the Complainant to support its assertions with actual evidence in order to prove that each of the conditions specified in paragraph 1.1 of the Policy are met. 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.
Pursuant to paragraph 1.3.1 of the Policy, protected identifiers include “trade and service marks protected in the island of Ireland”.
In the present case, the Complainant has provided evidence that it owns a CTM for the mark DAFT. The CTM is protected in the island of Ireland and therefore constitutes a protected identifier.
The Panel makes no finding as to whether the Complainant acquired common law rights in the term “daft”, by virtue of its trading activities since 2000, such as would constitute a protected identifier, as the Complaint contains no evidence (aside from a report entitled “Online Property: Certificate of Activity” issued by ABC Electronic in respect of for May 2009) to support the Complainant's assertion in this regard. (See e.g., Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited,WIPO Case No. DIE2005-0002.)
Apart from the domain suffix “.ie” (which is immaterial in this context), the disputed domain name differs from the protected identifier only by the addition of the generic word “motors”. This difference is insignificant and the disputed domain name still has the obvious potential to mislead the public, given the inclusion of the Complainant's trademark DAFT in the domain name. (See e.g., Monster Worldwide, Inc., and Monster Worldwide Ireland Limited v. Monster Finance Limited,WIPO Case No. DIE2009-0001.)
The Panel concludes that the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights. B. Rights or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests in the disputed domain name.
The factor in paragraph 3.1.1 provides:
“…where the registrant can demonstrate that, before being put on notice of the complainant's interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.
The Registrant (not having participated in this proceeding) has not demonstrated that the conditions of paragraph 3.1.1 have been met.
The WhoIs records for the disputed domain name cite “Corporate Name” as the domain registration category under which the disputed domain name was registered with the IEDR. The Complaint states that the Registrant was incorporated on March 26, 2009, which was some two months following registration of the disputed domain name. It would appear that in order to register a domain under the “Corporate Name” category the Registrant would have been required pursuant to the Registration Policy of the IEDR to submit a copy of its Company Number along with its application.
The Panel wished to clarify how the Registrant could have submitted a copy of its Company Number in advance of the date of its incorporation. The Registrant was therefore requested pursuant to Panel Order No. 2 to provide an explanation, along with any supporting documentary evidence, of how it was able to register the disputed domain name in this category on January 19, 2009. The Panel Order was copied to the IEDR in the event that it wished to comment.
The Registrant did not provide a response to the Panel Order.
The IEDR submitted a response to Panel Order No. 2 on January 11, 2010. The response reads as follows:
“The domain in question, , completed registration on 19 January 2009 under the Class ‘Body Corporate'. The number provided was 469091, which was verified using . The name associated with this company number was Daft Motors Limited. However, upon viewing today, it now shows that the company name associated with this number appears to have been changed to Clearmotors Limited. This information can also be verified at ‘'.”
The Panel notes from publicly available information on the Companies Registration Office (“CRO”) website that the recorded date of incorporation of the Registrant is March 26, 2009. It remains unclear to the Panel as to how a copy of the Registrant's Company Number could have been submitted in advance of the recorded date of its incorporation. However, this is not material – the fact remains that the Registrant appears to have been incorporated around the time it registered the disputed domain name and the Registrant has not contested this.
In the absence of any credible explanation otherwise by the Registrant, it would seem that the Registrant was incorporated possibly to fulfil the requirements of the Registration Policy of the IEDR.
In the Panel's view, the registration of the Registrant as an incorporated entity does not per se generate rights or legitimate interests.
The Complainant states that it has not licensed or otherwise authorized the Registrant to use its trade mark and the Registrant has not sought to contradict this.
Paragraph 3.1.2 does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant. Paragraph 3.1.3 does not apply as the disputed domain name does not include a geographical indication.
The Complainant has established a prima facie case of lack of rights and legitimate interests and the Registrant has not sought to contest this.
The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
Paragraph 2.1 of the Policy specifies six non-exhaustive factors that may be considered as evidence of registration or use in bad faith. Although the Complaint does not specify the particular sub-paragraphs on which the Complainant relies, it would appear to the Panel from the text of the Complaint that the Complainant seeks to rely on sub-paragraphs 2.1.4 and 2.1.5. These provide:
“2.1.4 where the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the complainant has rights;
2.1.5 where the domain name is used in a way that is likely to dilute the reputation of a trade mark or service mark in which the complainant has rights;”
With reference to paragraph 2.1.4, the Complainant asserts that it has been operating “a significant online classified advertisements business under the name DAFT in Ireland for some ten years before the registration of the disputed domain name.” However, the Complaint contains no actual evidence to support the Complainant's assertions in this regard. The Panel notes that the Complaint contains a copy of a report entitled “Online Property: Certificate of Activity” issued by ABC Electronic in respect of for the month of May 2009. While the data in the report indicate a level of worldwide traffic suggestive of a well known website, the period to which the report relates does not precede, but rather post-dates by a number of months, the date of registration of the disputed domain name.
The Panel does not believe that Daft is a highly distinctive name such as would enable the Panel, in the absence of supporting evidence, to conclude that it is “highly probable” that the Registrant chose the disputed domain name with the Complainant's protected identifier in mind and therefore to infer bad faith registration. (Cf. Kelkoo SA v. Lina Musinkiene,WIPO Case No. DIE2007-0002, and Facebook Inc. v Talkbeans Media Limited,WIPO Case No. DIE2007-0009). While the Panel notes that certain UDRP panels have been prepared to infer constructive notice of the complainant's pre-existing trade mark to support a finding of bad faith registration or use (see e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4), this Panel does not view such an approach as in keeping with the requirements of paragraph 1.4 of the .IE Policy.
The Complainant also refers, among other things, in the Complaint to certain communications between the parties following the cease and desist letter issued by its solicitors as evidence of bad faith registration. The Complainant asserts that Registrant's “failure to provide a reasonable explanation” for its choice of domain name has “led the Complainant to conclude that the registration of the disputed domain name amounts to an intentional attempt by the Registrant to attract internet users to its website by creating confusion with the Complainant's protected trademark and acquired reputation.” Following a careful review of the communications referenced in the Complaint, including all correspondence exhibited to the Complaint, the Panel is not persuaded that those communications constitute evidence of bad faith registration or use for the purpose of paragraph 2.1 of the Policy.
The Panel notes from the correspondence exhibited to the Complaint that the solicitors for the Complainant asserted that the Complainant had received a number of enquires from potential advertisers querying whether the Complainant was involved with the Registrant and later asserted that “[the Complainant] has received a number of enquiries from potential advertisers querying whether [the Complainant] was involved with [the Registrant's] company.” However, the Complainant does not refer to these matters in its Complaint, nor does it provide any supporting evidence of any actual confusion that may have been created by the Registrant's use of the disputed domain name.
With reference to the arguments in the Complainant that appear to relate to paragraph 2.1.5, the Panel notes that the Complainant's submissions of its asserted protection of its brand (see 5. A., above) are not supported by any actual evidence, nor has the Complainant adduced any evidence to support its claim that “it is highly probable that the use of the trademark by the [Registrant] will seriously dilute and damage the reputation of the Complainant” to enable the Panel to make a finding of bad faith use.
The Panel does not find that the disputed domain name has been registered or is being used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John P. Gaffney
Sole Panelist
Dated: January 19, 2010
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