The Complainant is Commission for Communications Regulation, Ireland, represented by Mason Hayes & Curran, Ireland.
The Registrant is Metodi Darzev, Tool Domain OOD, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2020. On July 7, 2020, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On July 8, 2020, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”). In accordance with the IEDR Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on July 9, 2020. In accordance with the IEDR Rules, the due date for Response was August 7, 2020. The Registrant did not submit any response. Accordingly, the Center notified the Registrant’s default on August 10, 2020. The Center appointed Adam Taylor as the sole panelist in this matter on August 19, 2020. 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 IEDR Rules. 4. Factual Background The Complainant, which was established in 2002, is the statutory body responsible for the regulation of the electronic communications sector (including telecommunications, broadcasting, and premium rate services) in the Republic of Ireland. Since 2002, the Complainant has used the abbreviated version of its name, “ComReg”, to identify itself including in booklets, reports, studies, advertisements, and stationery / branded items. The Complainant has spent EUR 10,000 marketing the name. The Complainant operates its main website at “www.comreg.ie”. In 2004, the Complainant registered the disputed domain name and used it for a website designed to provide consumer-friendly information about the sectors which the Complainant regulates. During 2015 and 2016, the website averaged over 300,000 visitors per year. The website is linked to from approximately 17,000 external websites including those of Irish governmental and other official bodies. The Complainant inadvertently failed to renew the disputed domain name and it was registered by the Registrant on November 23, 2018. As of June 17, 2020, the disputed domain name resolved to a website branded with name “askcomreg.ie” and, underneath, the words: “Communications Regulation”. There then follows what purports to be a blog about regulation by an unnamed “regulatory body”, with an address in the Netherlands, that allegedly wished to protect consumers in the electronic communications sector. At the end of the blog, there was a button to allegedly download a free e-book as well as three “Recommended Links” as follows: “Consumer Protection: Home”, “Six Types of Electronic Communication”, and “Learn the Ways Leaders Encourage Innovation”. The “Contact Us” page stated that the blog was maintained by a Mark Jefferson, who allegedly worked for mobile companies, to “help in regulating the field so the public will be protected from being taken advantage [of] by greedy business owners”. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The disputed domain name is identical or similar to the protected identifier “ComReg” in which the Complainant has common law rights in the island of Ireland based on the tort of passing off. The Registrant lacks rights in law or legitimate interests in the disputed domain name. The Registrant is not using the disputed domain name or the name “ComReg” to offer any legitimate goods or services or as a brand name and has not registered such names as trade marks. The Registrant’s efforts to attract Internet users to its website by creating confusion with the Complainant’s protected identifier obviates any possibility that the disputed domain name is being used with a good faith offering of goods or services or operation of a business. The significant degree of fame associated with the Complainant’s protected identifier also indicates that the Registrant lacks rights in law or legitimate interests. The Registrant’s business address is in Bulgaria and there is no conceivable reason why the disputed domain name is required for that business, assuming it is bona fide. There is no evidence that the disputed domain name corresponds to the personal name or pseudonym of the Registrant. The disputed domain name is not identical or misleadingly similar to a geographical indication protected in Ireland. The disputed domain name was registered or is being used in bad faith in accordance with paragraphs 2.1.2 to 2.1.5 of the Policy. The Registrant must be an Irish citizen or resident under the connection-with-Ireland requirements for “.ie” domain names and was therefore well aware of the significant reputation of the Complainant’s protected identifier at the time of registration of the disputed domain name. It is highly unlikely that the Registrant chose the domain name independently of the Complainant’s protected identifier. Re-registration of a domain name by another party shortly after it accidentally expires is an example of opportunistic bad faith. The Registrant selected the disputed domain name to take advantage of the Complainant’s extensive reputation as well as the search engine ranking associated with the Complainant’s previous website at the disputed domain name. The Registrant’s activities have severely disrupted the Complainant’s ability to carry out its functions because stakeholders seeking access to the Complainant’s documents that were historically available at the website at the disputed domain name, including via the many resources that still link to the site, will not find the information they seek and are likely to be confused into thinking that the Registrant is associated with the Complainant. Use of the disputed domain name constitutes an attempt to create initial interest confusion, amounting to bad faith. The Registrant’s use of the disputed domain name for a website purporting to relate to the regulation of communications damages or dilutes the Complainant’s reputation. B. Registrant The Registrant did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that: - the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; - the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered or is being used in bad faith. 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”. At this point it is relevant to refer to 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”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006. Section 1.3 of WIPO Overview 3.0 explains that to establish unregistered or common law trade mark rights for the purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. In the Panel’s view, this approach applies equally to paragraph 1.3.1 of the IEDR Policy. See also section 1.7 of WIPO Overview 3.0, explaining that it is well accepted that this first element functions primarily as a “standing” or “threshold” test. Here, the Complainant has provided evidence that, since 2002, it has extensively used, and become widely known in the Republic of Ireland by, the distinctive name “ComReg” in connection with its regulatory functions and related services including its high-profile consumer information website formerly located at the disputed domain name itself. The Complainant has also used the name “ComReg” in other ways including in reports, advertisements, and branded items and it has spent some EUR 10,000 marketing the name. In these circumstances, the Panel has little difficulty in concluding that the name “ComReg” has become a distinctive identifier associated with the Complainant’s good and services and that it constitutes a protected identifier for the purpose of the IEDR Policy. The disputed domain name is misleadingly similar to the protected identifier. It simply adds the descriptive term “ask”. The country code Top-Level Domain “.ie” is disregarded for the purpose of this comparison. 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 As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark. Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name. As to paragraph 3.1.1 of the IEDR Policy, there is no evidence of any “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”. For reasons explained in section 6C below, the Registrant’s use of the disputed domain name for a website for a blog about regulatory matters could not be described as bona fide. Nor is there any evidence that paragraphs 3.1.2 or 3.2.3 of IEDR the Policy apply in the circumstances of this case. 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. 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 The Panel considers that the Registrant was likely to have been aware of the Complainant and its role at the time of registration of the disputed domain name. First, the disputed domain name is inextricably linked with the Complainant. It consists of the Complainant’s abbreviated and distinctive name, prefaced by the word “ask”. The disputed domain name makes little sense when considered independently of the Complainant. Second, for some 14 years the Complainant used the disputed domain name for its high-profile information website, a fact which is unlikely to have escaped the attention of the Registrant, who registered the disputed domain name immediately after it was inadvertently allowed to expire. Third, the Registrant has used the disputed domain name for a website with a blog purportedly written by a regulatory body that is almost certainly bogus, not least because it is unnamed. Most likely the website at the disputed domain name was designed to profit from the substantial traffic to the Complainant’s old website at the disputed domain name by means of pay-per-click links. In any case, the Panel is satisfied that the website’s allusion to a regulatory body for electronic communications, as well as its “askcomreg.ie / Communications Regulation” branding was intended, for illicit purposes, to confuse the, likely, many visitors seeking the Complainant’s information website into thinking that the Registrant’s website was somehow connected with the Complainant, with potential damage to the Complainant’s reputation as a result. The Panel is not convinced by the claim on the “Contact Us” page that the blog was maintained by a person who formerly worked for mobile phone companies with the aim of helping to regulating this field so that the public would be protected from “greedy business owners”. The relationship between this person and the unnamed regulatory body which allegedly wrote the blog is nowhere stated and, to the Panel, this assertion looks more like an implausible attempt to legitimise the holding of the disputed domain name by trying to reinforce the alleged connection between the website and “communications regulation”. Furthermore, the Registrant has not appeared in this proceeding to deny the Complainant’s allegations of bad faith or to put forward any clear and plausible explanation for its registration and use of the disputed domain name. Taking all of the above matters into account, the Panel concludes that the Registrant registered and/or used the disputed domain name in bad faith and that the Complainant has therefore 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 IEDR Rules, the Panel orders that the disputed domain name, Adam Taylor
Sole Panelist
Date: September 8, 2020
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