WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Automobile Club of Victoria (RACV) Ltd. v. Daniel Nerezov, DriveHappy Accident Management Pty Ltd.

Case No. D2019-1967

1. The Parties

The Complainant is Royal Automobile Club of Victoria (RACV) Ltd., Australia, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Daniel Nerezov, DriveHappy Accident Management Pty Ltd., Australia.

2. The Domain Name and Registrar

The disputed domain name <racv.claims> is registered with Melbourne IT Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. On August 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2019, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 2019.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on October 25, 2019. 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 Complainant is a motoring club and mutual organization, based in Victoria, Australia and established in 1903. It provides its members with a range of products and services in the areas of motoring and mobility, home, leisure, financial services and general insurance. It has more than 2.2 million members and maintains a website at “www.racv.com.au” with a monthly average of 860,000 visitors during the period of January 2019 to June 2019 and a strong social media following. The Complainant owns various Australian trade mark registrations for RACV, including in particular, trade mark registration 812796 registered on November 24, 2000.

The disputed domain name was registered on February 20, 2019 and diverts to a registrar’s parking site.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its RACV mark. It submits that the Top-Level Domain (“TLD”) extension should be ignored and that disputed domain name wholly incorporates its mark and in fact that the second level element of the disputed domain name consists solely of its RACV trade mark and relies upon Insurance Australia Group Limited v. Private Registration AU / Daniel Nerezov, Drive Happy Accident Management Pty Ltd, WIPO Case No. D2019-0650. As a consequence, the Complainant submits that the disputed domain name is identical to the Complainant’s RACV mark and therefore meets the requirements under the first element of the Policy.

The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way and that it has not given the Respondent a license, authorisation or permission to use the Complainant’s trade mark in any manner, including in domain names. It further submits that the Respondent is not commonly known by the disputed domain name and is making no actual or contemplated bona fide or legitimate use of it. It notes that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a generic, registrar’s parking page and lacks content and that therefore the Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evinces a lack of rights or legitimate interests for the purposes of the second element of the Policy.

The Complainant says that its RACV trade mark is widely known in Australia and that the Respondent registered the disputed domain name on February 20, 2019, which is significantly after the Complainant filed for registration of its RACV trade marks. The Complainant says that by registering a domain name that incorporates the Complainant’s RACV trade mark in its entirety, the Respondent has created a domain name that is confusingly similar to the Complainant’s trade mark, as well as to its <racv.com.au> domain name. As such, it says that the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. It notes that both the Respondent and the Complainant are located in Australia; Sydney and Melbourne respectively and that the Respondent’s primary business is providing motor accident management and insurance services in Australia. Considering the composition of the disputed domain name, the Complainant’s fame and the fact that Respondent operates in a very similar business segment, the Complainant submits that the Respondent must have been aware of the Complainant and of its business at the time that the disputed domain name was registered. The Complainant has put into evidence the Linked In page of a director of the Respondent which describes how the Respondent provides accident management and risk management services for people involved in car accidents and provides accident management services for fleets, smash repairers.

The Complainant notes that the disputed domain name currently resolves to a registrar’s parking page and is not otherwise being used. It says that the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith under paragraph 4(b)(iv) of the Policy, with no good faith use possible. It further says that there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name. Rather it is indicative of an intention to hold the disputed domain name “for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.” It notes that the inclusion of the generic Top-Level Domain (“gTLD”) “.claims” in the disputed domain name which corresponds to the Complainant’s area of trade or business, further indicates that the Respondent was aware of the Complainant and its rights in the RACV trade mark.

The Complainant submits that in light of the degree of renown attaching to the RACV mark in Australia it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the disputed domain name was registered (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case D2000-0003). It says that the RACV mark is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” (Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case D2000-0226 (May 17, 2000. Further, says the Complainant, where the disputed domain name is an exact reproduction of the Complainant’s RACV trade mark, it defies common sense to believe that the Respondent coincidentally selected the precise disputed domain name without any knowledge of the Complainant and its trade marks.

The Complainant submits that the passive holding of the disputed domain name in circumstances that the Respondent was clearly well aware of the Complainant’s business and mark and in view of its past history of cybersquatting in similar circumstances in Insurance Australia Group Limited v. Private Registration AU / Daniel Nerezov, Drive Happy Accident Management Pty Ltd, WIPO Case D2019-0650) is indicative of some future active use in a way which could be only detrimental to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various Australian trade mark registrations for RACV including in particular trade mark registration 812796 filed on November 5, 1999 and accepted for registration on November 24, 2000. The disputed domain name wholly contains the Complainant’s RACV trade mark without the inclusion of any additional element before the TLD “.claims”. As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark registration (see, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Complaint succeeds under the first element of the Policy

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not sponsored by or affiliated with the Complainant in any way and that it has not given the Respondent a license, authorisation or permission to use the Complainant’s trade mark in any manner. It has further submitted that the Respondent is not commonly known by the disputed domain name and is making no actual or contemplated bona fide or legitimate use of it. The Complainant has pointed out that the Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a registrar’s parking page and that lacks content and that therefore the Respondent has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evinces a lack of rights or legitimate interests for the purposes of the second element of the Policy.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. For this reason and for the reasons set out under Section 6C. below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name on February 20, 2019, which is significantly after the date on which the Complainant filed for registration of its RACV trade marks and in particular after the registration of the Complainant’s trade mark 812796 that was registered on November 24, 2000. By the date of registration of the disputed domain name it is apparent that the Complainant enjoyed a very strong reputation attaching to its RACV trade mark as a result of having more than 2.2 million members, which is a sizable proportion of the Australian public. In addition, also considering the Respondent’s business in accident management and risk management services for people involved in car accidents, the Respondent must have been aware of the Complainant’s RACV trade mark and business when it registered the disputed domain name. In the Panel’s view it is more likely than not that the Respondent registered the disputed domain name and did so in the “.claims” TLD space with a view to using it to trade off the reputation attaching to the Complainant’s RACV mark. This inference is only reinforced by the Respondent’s prior involvement in the very similar case involving a counterpart to the Complainant that is based in Sydney, namely Insurance Australia Group Limited v. Private Registration AU / Daniel Nerezov, Drive Happy Accident Management Pty Ltd., Supra.

The disputed domain name has not been used by the Respondent but diverts to a registrar operated parking page. In view of the very significant degree of reputation attaching to the Complainant’s mark in Australia resulting from a very substantial membership built up over more than 115 years of operation and of the near certainty that the Respondent was well aware of the RACV mark when it registered the disputed domain name and considering the Respondent’s apparent line of business in the motor accident claims sector and the Respondent’s total failure to explain its registration, it seems entirely implausible to the Panel that the Respondent registered the disputed domain name for any purpose other than one which would compete with the Complainant or profit from the use of its mark. These circumstances are consistent with the principles for a finding of bad faith by passive use as set out at section 3.3 of the WIPO Overview 3.0. Further, this finding is only reinforced by the Respondent’s recent prior involvement in the very similar case involving the complainant Insurance Australia Group Limitedas noted above.

For these reasons the Panel finds that the disputed domain name was both registered and is being used in bad faith and the Complaint also succeeds under this element 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 <racv.claims> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: November 8, 2019