The Complainant is Rally Design Limited, Faversham, Kent, United Kingdom of Great Britain and Northern Ireland, represented by Alf Oxford, United Kingdom of Great Britain and Northern Ireland.
The Respondent is TAS Motorsport, Leyland, Lancashire, United Kingdom of Great
Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <rallydesign.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2004. On October 22, 2004, the Center transmitted by email to Tuscows Inc a request for registrar verification in connection with the domain name at issue. On October 25, 2004, Tuscows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default to the Complainant on November 18, 2004.
The Center appointed Isabel Davies as the sole panelist in this matter on November 26, 2004.
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, Rally Design Ltd, was incorporated in 1987, and alleges use of “rally design” and “Rally Design” (the “Marks”) for the distribution and resale of car parts, including use on rally and sports cars, both in the United Kingdom and across the world; such that the Marks have become established and well known.
The Complainant alleges that the domain names < raldes.co.uk>, first registered in May 1998, and < rallydesign.co.uk>, first registered in December 1999, have become registered for the sole use of promoting and carrying out the business of the Complainant.
Neither of these allegations have been contested and the Panel accepts these as undisputed facts.
The domain name in dispute is registered with Tuscows Inc.
According to the Registrar’s WHOIS database, the registrant of the domain name is TAS Motorsport and the administrative and technical contact is Get Free Domains From “www.uk2.net”
The record was last updated on March 12, 2004. A copy of the printouts of WHOIS data for <rallydesign.com> is attached to the Complaint at Annex 4.
The Respondent is a competitor carrying out similar trading interests as that
of the Complainant. On request for the surrender or transfer of the domain name
registration to the Complainant, a valuable consideration in excess of the Respondent’s
out-of-pocket costs directly related to the domain name was requested, namely
£5,000 plus VAT. Although no evidence has been submitted, these facts have not
been contested and the Panel accepts these as undisputed facts.
5. Parties’ Contentions
A. Complainant
Complainant contends that, whilst the domain name was not originally registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark, on request for the surrender or transfer of the domain name registration to the Complainant, a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name was requested, namely £5000.00 (Five Thousand GBP) + VAT.
Complainant contends that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
It is further contended that the domain name was registered primarily for the purpose of disrupting the business of a competitor and that, by using the domain name, the Respondent intentionally attracts for commercial gain, Internet users to the Respondent’s website, by use of an immediate re-direction of the user and by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location.
The domain name <rallydesign.com> links to TAS Motorsport Limited which, it can be seen from the website, trades as TAS Motor Sport. The website makes no reference to ‘rally design’.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant requests that the panel asks the Registrar to transfer the domain name <rallydesign.com> from the Respondent to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
(a) Identical
The Panel finds that the Complainant has rights to the RALLY DESIGN Mark, derived from its use of that mark in commerce. The domain name <rallydesign.com> is identical and confusingly similar to Complainant’s RALLY DESIGN Mark.
(b) Rights or Legitimate Interests
The Complainant has alleged that the Respondent lacks rights and legitimate interests in the disputed domain name. Given that the parties operate in the same industry and that Respondent is clearly aware of the Complainant, the panel finds that the Complainant has shown a prima facie case that the Respondent has no rights and legitimate interests in the domain name. The Respondent has, by failing to respond, shown no rights or legitimate interests in respect of the domain name <rallydesign.com> to rebut the Complainant’s case.
(c) Registered and Used in Bad Faith
The registration prevents the Complainant (the Respondent’s competitor), who has used and built up a reputation in the mark ‘RALLY DESIGN’, from reflecting the mark in a corresponding domain name, and the domain name has been registered by the Respondent primarily for the purpose of disrupting the Complainant’s business. By the use of an immediate redirection of the user to the Respondent’s website, a likelihood of confusion is created which may be as to source, sponsorship, affiliation or endorsement.
Respondent registered <rallydesign.com> several years after Complainant started using their mark. As a competitor not trading under the mark ‘rally design’, it appears unlikely that the Respondent had no knowledge of Complainant’s prior adoption and usage of the mark. Registering a domain name primarily for the purpose of disrupting the business of a competitor and/or for attracting Internet users to another site by creating confusion is evidence of bad faith (Policy, paragraphs 4(b)(iii), (iv)). Demands of money in addition to the costs of transferring the domain name is further evidence of bad faith (Policy, paragraph 4(b)(i)).
Complainant has made an unchallenged allegation that the Respondent requested the sum of £5,000 + VAT, when asked to surrender or transfer the domain name registration. This constitutes use in bad faith.
The Panel determines that Respondent acted in bad faith in registering and
using a disputed domain.
7. Decision
Having established all three elements required by paragraph 4(a) of the Policy, it is the decision of the Panel that the request for relief be granted. Accordingly, for all the foregoing reasons, it is ordered that the domain name <rallydesign.com> be transferred from Respondent to Complainant.
Isabel Davies
Sole Panelist
Dated: December 10, 2004
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