The Complainant is Commission for Regulation of Utilities (“CRU”), Ireland, represented by Mason Hayes & Curran, Ireland.
The Registrant is E.D., Ireland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021, via email. On June 9, 2021, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On June 10, 2021, IEDR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Registrant and contact information in the Complaint. The Center sent an email communication to the Complainant on June 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 10, 2021.
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 “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 June 11, 2021. In accordance with the Rules, paragraph 5.1, the due date for Response was July 9, 2021. On June 18, June 23, and June 25, 2021, the Registrant sent queries via email to the Center. The Center replied on June 21, June 24, and June 29, 2021, respectively. On July 1, 2021, the Registrant sent an email to the Center expressing concern regarding data protection issues, to which the Center responded on July 13, 2021. The Response was filed with the Center on July 9, 2021, and the Center informed the Parties that it would proceed with panel appointment pursuant to paragraph 6 of the Rules.
The Center appointed Adam Taylor as the sole panelist in this matter on August 10, 2021. 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 BackgroundThe Complainant is the statutory body responsible for the regulation of the Republic of Ireland’s energy and water economic utilities.
The Complainant owns Irish registered trade mark no. 234524 for RGI, registered on July 27, 2004, in classes 41 and 42.
The disputed domain name was registered on February 16, 2021, having previously been owned by a company unrelated to the Complainant. The confirmation email from the domain name provider dated February 18, 2021, was addressed to E.D., followed by “(Savage Day Limited [referred to below as “the Company”])”.
On February 18, 2021, the Company applied to register “rgi.ie” as a business name with the Companies Registration Office.
On February 24, 2021, the Complainant emailed the Registrant, referring to the recent registration of the disputed domain name and drawing attention to the Complainant’s trade mark as well as to the “RGI Scheme”. The Complainant invited the Registrant to contact it to discuss the disputed domain name.
The Registrant responded on February 25, 2021, stating, amongst other things, that the disputed domain name had previously been owned by a third party from 2006 until very recently. The Registrant added that he was aware of the trade mark but understood that use of the disputed domain name was permissible outside the relevant classes in which the trade mark was registered. He said that it was not his intention to use the disputed domain name in any of those categories and, furthermore, that it was not his intention to offer the disputed domain name for sale as he had identified a specific use for it.
Further correspondence followed in which the Complainant invited the Registrant to put forward a price at which he would be willing to sell the disputed domain name. On March 5, 2021, the Registrant offered to sell the disputed domain name for EUR 32,000 based on compensation for loss of income that the Registrant had expected to earn from the disputed domain name.
On March 16, 2021, the Registrant emailed to say the intended use of the disputed domain name would proceed as the Complainant had not responded to the Complainant’s offer.
On March 26, 2021, the Company’s application to register “RGI.ie” as a business name was granted.
On April 23, 2021, the Registrant emailed the Complainant to say that, before beginning the marketing “[…]@rgi.ie” to its potential users, he would consider an offer in the region of EUR 15,000 for the disputed domain name. The Complainant did not respond.
As of June 8, 2021, the disputed domain name resolved to a website branded “rgi.ie” and stating underneath: Savage Day Limited T/A rgi.ie”. The site went on to say: “We offer Ireland’s premium email address for Gas Fitters and Installers. Are you a Sole Trader or Independent Contractor that is registered with a State Body to install and service gas appliances and pipelines? The best and most professional email address for your business… Present your most professional work image with “yourusername”@rgi.ie...”
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
The Complainant has developed sufficient goodwill in the mark RGI to afford it protectable common law rights in the island of Ireland.
The disputed domain name is identical or at least misleadingly similar to the Complainant’s registered and unregistered trade mark.
The Registrant lacks rights in law or a legitimate interest in the disputed domain name.
The Registrant registered its business name in bad faith as he had been put on notice of the Complainant’s trade marks a month earlier.
So far as the Complainant is aware, the Registrant has not sought to register RGI or the disputed domain name as a trade mark.
There is no evidence of any legitimate offering of goods and services under the disputed domain name.
The Registrant’s use of the disputed domain name for a website offering “[…]@rgi.ie” email addresses is not a bone fide use of the disputed domain name. It endangers public safety by enabling unregistered persons to hold themselves out as unregistered gas installers, which is potentially a criminal offence under the Electricity Regulation Act 1999.
The disputed domain name does not correspond to the name of the Registrant. Nor is it identical or misleadingly similar to a geographical indication.
The fact that the Registrant has attempted to create a likelihood of confusion with the Complainant’s protected identifier, as well as the significant fame thereof, are further indicators that the Registrant does not possess rights or legitimate interests in the disputed domain name.
The disputed domain name was registered or subsequently used in bad faith.
It is clear that the Registrant was well aware of the extensive reputation of the Complainant’s protected identifier at the time of registration of the disputed domain name. It is highly unlikely that the Registrant registered the disputed domain name for a reason that was independent of that protected identifier.
Re-registration of a domain name shortly after it has accidentally expired can amount to opportunistic bad faith.
The Registrant registered and/or is using the disputed domain name primarily to prevent the Complainant from reflecting its protected identifier in a corresponding domain name.
Many people in Ireland know RGI as an acronym for “registered gas installer” and would be accustomed to use the term to search for registered gas installers. Many resources continue to direct consumers and businesses to the disputed domain name. The Registrant’s use of the disputed domain name is intended to divert traffic to a website with content that is completely unrelated to the regulation of gas installers, and it also enables people to acquire email addresses implying that they are registered gas installers, when they may not be. Accordingly, the Registrant has registered and/or is using the disputed domain name primarily to interfere with or disrupt the Complainant’s statutory functions.
The Registrant has offered the disputed domain name for sale to the Complainant in bad faith at a price that is grossly in excess of the costs directly related to its registration.
The Registrant has registered and/or is using the disputed domain name in order to create a likelihood of confusion with the Complainant’s protected identifier, in particular to cause “initial interest confusion”. The Registrant is seeking to profit from the Complainant’s protected identifier and from the Complainant’s statutory obligation to use this term to regulate gas installers. This is liable to damage or dilute the reputation of the Complainant and its protected identifier.
B. RegistrantThe following is a summary of the Registrant’s contentions.
The Registrant strongly contests the Complainant’s assertions.
Transmission of the Registrant’s personal information from IEDR to the Complainant breached Irish data protection laws.
The disputed domain name is legally owned by the Company, and not the Registrant. The Company would happily have responded to the Complaint. The Registrant does not himself hold any relevant domain name provider accounts and is merely the administrative contact for the Company. In pre-action correspondence, the Complainant considered that the Company was the legal owner. It is relevant that the Company owns the business name “RGI.ie”, which was applied for a week before the first communication from the Complainant and which shows that the Companies Registration Office considered that the Company was the legal owner of the disputed domain name.
The Registrant cannot comment on the ownership of the disputed domain name, because the registrant name has been redacted by IEDR.
The Registrant suspects that the most recent domain name provider through which the disputed domain name was held may have made a mistake by naming him as registrant instead of the Company. A declaration had been provided stating that the Company, a body corporate, was the legal owner of the disputed domain name. However, he cannot be sure until IEDR has responded to his two data protection subject access requests. The Registrant proposes to exercise his data protection right to require his personal information to be changed to that of the correct legal owner in due course.
The Registrant has no case to answer and his good name has been tarnished. Following the filing of the Complaint, his personal information was made available to the Complainant in circumstances that do not comply with data protection law and he proposes to make a complaint to the Irish Data Protection Commissioner. The Registrant has also been in contact with the Office of the Ombudsman.
The Registrant also strongly objects that, before the Complainant was filed, the Complainant sought, and IEDR supplied, the date when the disputed domain name was due to become available for purchase, which was valuable and commercially sensitive inside information and also that the Complainant, an agency of the Irish government, then used this information to try and obtain the disputed domain name for itself.
6. Discussion and FindingsUnder 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.
The Registrant asserts strongly that the Company, and not E.D., should have been named as the Registrant in the Complaint since the Registrant believes that the Company is, or ought to be shown as, the legal owner of the disputed domain name.
The Panel notes that “Registrant” is defined in the Rules as “the holder of a domain name registration against which a complaint is initiated”. And the introduction to the IEDR Policy refers to a situation where a domain name has “been wrongly registered to another party (the Registrant)”. For the purposes of the Policy, therefore, the Complaint correctly names E.D. as the Registrant because he has been identified by IEDR as the registered holder of the disputed domain name – notwithstanding that the Registrant believes that the Company is or should be the registered owner of the disputed domain name and that the Company’s name may have been omitted from the record due to a domain provider error. The fact that the Company has registered the disputed domain name as a business name has no bearing on the issue; it is the IEDR that maintains the .IE database, not the Companies Registration Office.
In any case, it would have made no difference to the outcome of this case if the Company had been the registered holder of the disputed domain name and the Complaint had named the Company instead of E.D. as “the Registrant”. It is often the case that the registered holder of a domain name is not its “real” beneficial owner or controller, for example where a web developer or employee registers a domain name in that person’s own name rather than in the name of the company for whom they are acting. In those circumstances, panels will generally take account of the actions and omissions of the underlying owner/controller of the domain name and not confine their enquiry to the activities of the agent.
Here, the Panel has no reason to doubt the Registrant’s assertion that the disputed domain name was registered on behalf of the Company, which the Registrant apparently controls. Accordingly, references to “the Registrant” hereafter should be treated as including the Company unless otherwise indicated.
The Registrant further objects that the transfer of his personal information from IEDR to the Complainant following the filing of the Complaint did not comply with data protection laws. However, such matters are outside both the competence and the role of the Panel and, indeed, the Panel notes that the Registrant proposes to make a complaint to the Irish Data Protection Commissioner. The sole function of this Panel is to assess whether the Complainant has established the three elements of the IEDR Policy.
Similarly, it is neither necessary nor appropriate for the Panel to consider the circumstances whereby IEDR informed the Complainant about the future expiry date of the disputed domain name. While the Registrant is plainly aggrieved about this matter, it is not relevant to the issues that the Panel is required to consider.
The Panel will now address the three elements under the IEDR Policy.
B. Identical or Misleadingly SimilarUnder paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns a European Union trade mark for RGI. This has effect within the Republic of Ireland and therefore constitutes a protected identifier.
The disputed domain name is identical to this protected identifier excluding the country code Top-Level Domain “.ie”, which 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.
C. Rights in Law or Legitimate InterestsAs explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition1 (“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, the Registrant (i.e., meaning the Company in this instance) has used the disputed domain name for a service related to the Complainant’s own service / scheme, whereby the Company offers “[…]@rgi.ie” email addresses to gas fitters and installers registered with the Complainant’s regulatory scheme.
Whether or not use of the Registrant’s service by unauthorised fitters or installers is a real risk and would be prohibited by Irish legislation (as to which the Panel expresses no view), the Panel considers that the Registrant’s use of the disputed domain name cannot be said to be constitute “good faith” use under paragraph 3.1.1 of the IEDR Policy on the grounds that the disputed domain name is identical to the Complainant’s trade mark and therefore carries a high risk of implied affiliation and misrepresentation. See sections 2.5.1 and 2.8.2 of WIPO Overview 3.0. In other words, the name chosen for the Registrant’s service effectively impersonates the Complainant, or at least implies that the website at the disputed domain name is officially connected with the Complainant in some way.
Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.
The Panel does not consider that registration of the disputed domain name as a business name constitutes rights or legitimate interests as it was applied for at around the time that the disputed domain name was registered and was plainly designed to support use of the disputed domain name for the above-mentioned email address service. There is no evidence that the business name was registered, let alone used, for any independent legitimate business purpose.
For the above reasons, the Panel finds that the Complainant has established that the Registrant lacks rights or legitimate interests in the disputed domain name and the Complainant has established the second element of paragraph 1.1 of the IEDR Policy.
D. Registered or Used in Bad FaithThe Registrant acknowledged in his email of February 25, 2021, that he was aware of the Complainant’s trade mark and, indeed, it is not in dispute that the disputed domain name was registered in order to enable supply of a service related to the Complainant’s service/scheme.
As explained in section 6.C. above, registration and use of a domain name identical to the Complainant’s trade mark in this context carries a high risk of implied affiliation and misrepresentation.
In these circumstances, the Panel considers that the Registrant has registered and/or used the disputed domain name in bad faith in accordance with paragraph 2.1.4 of the IEDR Policy. The Registrant has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s protected identifier.
The likelihood of confusion is not diminished by the possibility that at some point users arriving at website at the disputed domain name will realise that the site is not connected with the Complainant. Paragraph 2.1.4 of the IEDR Policy is concerned with the intentional attracting of Internet users. Here, the disputed domain name creates an implied risk of affiliation with the Complainant, and the Registrant likely profits from at least some of the traffic intended for the Complainant.
In his email to the Complainant dated February 25, 2021, the Registrant suggested that use of the disputed domain name would be permissible outside the relevant classes in which the Complainant’s trade mark was registered. While such an assessment of use of the disputed domain name may well be relevant in a trade mark infringement case (which would be a matter for court), in this proceeding the Panel is concerned with whether, in all the circumstances, the Registrant registered and/or used the disputed domain name to take unfair advantage of or otherwise abuse the Complainant’s mark. See section 3.1 of WIPO Overview 3.0.
For the above reasons, the Panel concludes that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy.
7. DecisionFor 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
Adam Taylor
Sole Panelist
Dated: September 3, 2021
1 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.