The Complainant is MAPFRE Assistance Agency Ireland of Galway, Ireland, represented internally.
The Registrant is Jason Evans, Car Protect Warranties, Ltd. of Dublin, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited ("IEDR"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2018, via email. On April 11, 2018, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On April 12, 2018, IEDR transmitted by email to the Center its verification response confirming the Registrant as the registrant and providing the Registrant's contact details.
The Center received email communications from the Registrant on May 14 and May 15, 2018.
The Center verified that the Complaint and the amended 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 Registrant of the Complaint, and the proceeding commenced on May 29, 2018. In accordance with the Rules, paragraph 5.1, the due date for Response was June 26, 2018. A formal Response was not filed with the Center, and the Center informed the Parties that it would proceed to appoint the administrative panel.
The Center appointed Adam Taylor as the sole panelist in this matter on July 5, 2018. 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 August 2, 2018, for reasons explained in section 6A below, the Panel issued Procedural Order No. 1, requesting further information from the Complainant and inviting comment from the Registrant thereafter. The Panel also extended the due date for the decision until August 25, 2018.
The Complainant responded to Procedural Order No. 1 on August 7, 2018. On August 8, 2018, the Registrant replied to the Complainant, questioning the submission, an exchange later copied to the Center by the Complainant, but the Registrant did not submit any comments directly to the Center. 4. Factual Background
The Complainant is part of the Mapfre insurance group, headquartered in Spain.
The disputed domain name was registered on June 8, 2017. It does not resolve to an active website.
The Registrant provides vehicle warranty services. 5. Parties' Contentions A. Complainant
A summary of the Complainant's contentions is as follows:
The disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights, namely the registered business identifiers "MAPFRE Assistance", and "MAPFRE Assistance Agency Ireland", and is clearly associated with the Madrid-based parent company of the Complainant.
There is no reasonably conceivable way in which the Registrant could have registered the disputed domain name in error or without knowledge of its association with the Complainant.
The Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
The Registrant is a director of a direct competitor of the Complainant and not legitimately associated with the Complainant or otherwise authorised to act for the Complainant.
The disputed domain name was registered or used in bad faith.
The domain name was registered or used primarily to prevent the Complainant from reflecting its protected identifier in a corresponding domain name.
The disputed domain name was registered primarily for the purpose of interfering with or disrupting the Complainant's business or activities.
The Registrant breached the applicable rules of registration for ".ie" domain names which require registrants to ensure that they do not infringe third party intellectual property rights. It is not reasonably possible to believe that the Registrant provided accurate information when registering the disputed domain name. B. Registrant
As mentioned above, the Registrant did not file a formal Response. Instead, it included the Center in two email communications directed to the Complainant claiming that it had previously agreed to transfer the disputed domain name to the Complainant in return for a letter confirming that no formal action would be taken against it. 6. Discussion and Findings A. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, "protected identifiers" include "trade and service marks protected in the island of Ireland".
The Complaint has not identified expressly the rights of the Complainant in a specified protected identifier as required under paragraph 3.4.7 of the Rules, stating only that "'MAPFRE' is part of the registered business identifiers 'MAPFRE Assistance', and 'MAPFRE Assistance Agency Ireland', and is clearly associated with the Madrid-based parent company of same."
The Complainant has not produced any printout or other proof of the existence of the "registered business identifiers" allegedly owned by this "parent company".
The Panel has consulted the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel nonetheless considers it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP.
Section 4.8 of WIPO Overview 3.0 notes that panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes accessing trade mark registration databases.
In view of this, and taking account of the fact that the Registrant has not contested the Complainant's assertions regarding protected identifiers, the Panel decided to consult the European Union Intellectual Property Office database. This shows that Mapfre España, Compañía de Seguros y Reaseguros, S.A. ("Mapfre España") owns European Union ("EU") trade mark no. 104133 for MAPFRE, filed April 1, 1996, registered September 10, 1998, in classes 16, 35, 36, 37, 41 and 42, as well as EU trade mark no. 110809 for MAPFRE ASISTENCIA, filed April 1, 1996, registered March 16, 1998, in classes 36, 39 and 42.
These EU trade marks are "protected identifiers" for the purpose of the IEDR Policy as they are protected in the island of Ireland.
Section 1.4.1 of WIPO Overview 3.0 further states that a trade mark owner's affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in a trade mark under the UDRP for purposes of standing to file a complaint.
Accordingly, the Panel issued Procedural Order No. 1, requesting that the Complainant explain its relationship with Mapfre España.
In response, the Complainant provided two documents: One identified "MAPFRE ASSISTANCE AGENCY IRELAND" as a registered business name under number 149896; the second was a separate listing (but with the same address as the business name registration) for Mapfre Asistencia Compania Internacional De Seguros Y Reaseguros, S.A ("Mapfre Asistencia") as a "Company (External)" under number 903874, with the parent country given as Spain. So this is a different company to Mapfre España, the holder of the registered trade marks.
The Complainant has therefore presented a somewhat confusing picture. It is surprising that, notwithstanding the specific request from the Panel, the Complainant has still failed to clearly explain or evidence its connection with the above-mentioned trade marks.
Nonetheless, taking into account the fact that the Registrant has not contested the Complainant's assertions and having reviewed the Complainant's own website, the Panel thinks it reasonable to infer (1) that Mapfre Asistencia, the apparent owner of the registered business name "MAPFRE ASSISTANCE AGENCY IRELAND" should be treated as the Complainant in this action and (2) that Mapfre Asistencia is an affiliate of Mapfre España, the holder of the trade marks, and that Mapfre Asistencia should be treated as having rights in the trade marks in accordance with the principle outlined in section 1.4.1 of WIPO Overview 3.0, as explained above.
Accordingly, the Panel concludes, narrowly, that the disputed domain name is identical to a protected identifier, MAPFRE, in which the Complainant has rights.
The disputed domain name is also misleadingly similar to the protected identifier MAPFRE ASISTENCIA, differing only by omission of the descriptive word "asistencia", meaning "assistance" in Spanish.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. B. Rights in Law or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited,WIPO Case No. DIE2006-0001.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Registrant.
Accordingly, the Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy. C. Registered or Used in Bad Faith
Given that the disputed domain name exactly reflects the Complainant's distinctive trade mark, that the Registrant is a direct competitor of the Complainant, that the Registrant has not disputed the Complainant's assertions of bad faith and that the Registrant has evinced a willingness to transfer the disputed domain name to the Complainant, the Panel has little difficulty concluding that the Registrant registered the disputed domain name in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: August 20, 2018
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