WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RAC Brand Enterprises LLP v. Promote UK / Attila Halasz / Wrong Fuel Angels
Case No. D2015-1142
1. The Parties
The Complainant is RAC Brand Enterprises LLP of Walsall, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Promote UK of London, United Kingdom / Attila Halasz / Wrong Fuel Angels of Croydon, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <rac-wrongfuel.com> is registered with Webfusion Ltd trading as 123-reg (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 3, 2015. 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
The background is taken from information provided in the Complaint.
The RAC is a long-established service to motorists in the United Kingdom with over 8 million members, offering among other things breakdown assistance, insurance, vehicle inspections, legal services and traffic information. The Complainant publishes annually "The RAC Report on Motoring".
One of the RAC services is the Wrong Fuel Recovery Service, which drains fuel tanks that contain the wrong fuel (petrol in place of diesel or vice versa), flushes and restores the fuel system and supplies some of the correct fuel.
The Complainant is the owner of the following trademarks registered at the United Kingdom Intellectual Property Office:
RAC, word mark, registered June 14, 1991, registration number 1293393, classes 12, 16, 36, 37, 39, 42, 43, 45;
RAC, figurative mark, registered August 28, 1998, registration number 2131612, classes 6, 9, 12, 16, 18, 20, 25, 26, 28, 35, 36, 37, 38, 39, 41, 42;
RAC, figurative mark, registered August 28, 1998, registration number 2136605, classes 5, 6, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 28, 34, 35, 36, 37, 38, 39, 41, 42;
RAC, figurative mark, registered June 10, 2005, registration number 2379536, class 3;
RAC, word mark, registered May 30, 2008, registration number 2470656, classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 45;
RAC, figurative mark, registered March 7, 2014, registration number 3023235, classes 3, 4, 8, 12, 14, 16, 18, 20, 21, 24, 25, 28, 30, 34, 35, 36.
The Complainant conducts business through the website "www.rac.co.uk".
The Respondent has not provided any information about itself. According to the Complainant, the Respondent, through the entity Wrong Fuel Angels of Croydon, United Kingdom, operates a service in parts of England that offers to deal with problems of the wrong fuel being put into vehicles.
The disputed domain name was registered on August 22, 2014 in the registrant name of Promote UK. In the Complainant's view the disputed domain name was registered on behalf of and is owned by Attila Halasz and Wrong Fuel Angels of Croydon, United Kingdom.
5. Parties' Contentions
A. Complainant
The Complainant contends that beneficial ownership of the disputed domain name rests with Attila Halasz and the company Wrong Fuel Angel Ltd., on the basis of a number of commonalities. A website "www.wrongfuel-angel.co.uk" and the website of the disputed domain name offer essentially the same wrong fuel replacement service and display the same telephone numbers and email address. A profile on Linkedin ("www.uk.linkedin.com") describes Attila Halasz in permutations of a mechanic or mobile mechanic at Wrongfuel Angel Ltd., or at Wrong Fuel Assistance Ltd., and provides other background information. The Complainant says that in general its own references to the Respondent refer to Attila Halasz of Wrong Fuel Angels.
The Complainant asserts that it has rights in the trademarks registered in its name as listed in section 4 above and has produced copies of documentation available online from TM View ("www.tmdn.org").
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark RAC. The generic Top-Level Domain ("gTLD") designation ".com" should be disregarded in the determination of confusing similarity. The use of lower case letters in place of capitalisation is of no significance in domain names. The additional words "wrong" and "fuel" are not distinguishing and do not avoid confusing similarity with the Complainant's trademark, but increase the confusing similarity, because they describe a service for which RAC is well known.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been permitted, authorised, or licensed to use the Complainant's trademark RAC, or to register or use a domain name containing the trademark or to offer any service in the name of RAC. The Respondent is not an authorised reseller of the Complainant's service.
The Complainant says that the Respondent's website describes its service as RAC Wrong Fuel which is not the Complainant's service and is not a bona fide offering of goods or services. This constitutes a bait‑and‑switch operation in which the Respondent, as a competitor of the Complainant, uses the Complainant's trademark in order to attract customers and then switch them to the Respondent's service.
The Complainant says according to its enquiries including searches for websites and trademarks, the Respondent is not commonly known by the disputed domain name. The Respondent's use of the disputed domain name is commercial and not a legitimate noncommercial or fair use.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It was registered over 15 years after the Complainant's registration of its RAC trademark, and after the Complainant had established its Wrong Fuel Recovery service.
It is contended that the Respondent was clearly aware of the Complainant and its goods and services, and registered the disputed domain name primarily for the purposes of disrupting the Complainant's business as a competitor in the same business. Furthermore the Respondent has intentionally attempted to attract customers to the website of the disputed domain name for commercial gain by confusion with the Complainant's trademark. The Respondent has employed search engine optimisation techniques through the services of Promote UK Ltd. In consequence, the disputed domain name appears on the first page of an Internet search for "RAC Wrong Fuel", which is likely to increase the scope for customer confusion between the Respondent and the Complainant.
The Complainant has cited certain previous decisions under the Policy that it considers may support its position.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Preliminary Issue: Identity of the Respondent
Paragraph 1 of the Rules defines a Respondent as "the holder of a domain-name registration against which a complaint is initiated". The WhoIs for the disputed domain name records Promote UK as the registrant and administrative contact. The Complainant, in a letter dated July 2, 2015 to the Center, requesting consolidation of the Respondents, says that Attila Halasz of the company Wrong Fuel Angels is the true owner of the disputed domain name. This assertion is derived in part from the Complainant's enquiries establishing that the website to which the disputed domain name resolves is the online presence of the business Wrong Fuel Angels which has contact details matching those of the similar website "www.wrongfuel-angel.co.uk", the domain name of which is registered to Attila Halasz. Furthermore, according to the Complainant, Promote UK develops websites on behalf of customers and its terms and conditions state at paragraph 2.7: "Your domain name is fully owned by you" and at paragraph 7.1: "The Customer warrants and represents that it is the owner of or is licensed to use the entire contents and subject matter contained in its Customer Content.... Including, without limitation... (ii) any copyright in the material, trademarks, service marks, logos, and/or depictions of trademarked or service marked goods or services, or any other intellectual property rights".
The Complainant has made the decision to name as Respondents the registrant of the disputed domain name, Promote UK, and its apparent owner and user, Attila Halasz, Wrong Fuel Angels. The Panel is satisfied that the Center, by addressing the Complaint to the contact details provided by both Promote UK and Attila Halasz, Wrong Fuel Angels, has fulfilled its obligations to attempt to contact the Respondent in accordance with paragraphs 2 and 4 of the Rules. Since apparently the disputed domain name has been under the control of a single guiding mind, the Respondent will be referred to in the singular.
B. Identical or Confusingly Similar
The Complainant is found by the Panel to have rights in the long-established registered trademark RAC. The disputed domain name <rac-wrongfuel.com>, features the Complainant's trademark RAC followed by the descriptive words "wrong fuel". The gTLD designation ".com" may usually be disregarded in the determination of confusing similarity. What remains may be read as "RAC wrong fuel". The trademark RAC, according to the evidence, is powerful and widely recognised, and its prominence in the disputed domain name, standing out as separated by a hyphen from "wrongfuel", is found to constitute confusing similarity. The RAC service for dealing with problems caused by inadvertent insertion of the wrong fuel is well promoted according to the evidence, and the appearance of "wrongfuel" in the disputed domain name is found not to be distinguishing but on the contrary to exacerbate confusing similarity with the Complainant's trademark.
The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and has not been licensed or authorised in any way to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not availed itself of the opportunity to offer any evidence or to make any submission in the terms of paragraph 4(c) of the Policy. In particular the Panel does not find the Respondent to be making a bona fide use of the disputed domain name because its website carries the banner "RAC WRONG FUEL" whereas, according to the evidence provided by the Complainant, it is not and cannot be offering the Complainant's RAC service. There is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy and its use is clearly not noncommercial.
On the available evidence the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation.
The Complainant has moved for a finding of registration and use in bad faith under paragraphs 4(b)(iii) of the Policy, disruption, and 4(b)(iv) of the Policy, attraction by confusion. Paragraph 4(b)(iv) of the Policy is especially pertinent in this case. The Respondent through the website of the disputed domain name presents the outward appearance of a business and, according to the Complainant, the Respondent has invested in search engine optimisation techniques to positive effect. The Internet aspect of the Respondent's business depends in part upon the disputed domain name, which by its structure, in the Panel's finding, presents an impression that is likely to confuse at least some Internet users, at least initially, into believing it to be operated by or endorsed by the Complainant. On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used, in bad faith, for the purpose of attracting Internet users to the Respondent's online location by confusion with the Complainant's trademark for commercial purposes. Furthermore the Panel finds on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used.
Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rac-wrongfuel.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: August 13, 2015
