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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Driver and Vehicle Licensing Agency (DVLA) v. UK Hire Services
Case No. D2007-1904
1. The Parties
The Complainant is Driver and Vehicle Licencing Agency (DVLA), Swansea, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is UK Hire Services, Swanley, Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <dvlaonline.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2007 by email and in hardcopy on January 16, 2008. On December 21, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same day, Tucows 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”), 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 January 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2008.
The Center appointed David Perkins as the sole panelist in this matter on February 20, 2008. 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
4.A. The Complainant
4.A.1 The Complainant, then known as Driver and Vehicle Licensing Centre, began operation in 1974. It changed its name to Driver and Vehicles Licensing Agency, known as DVLA, in 1990. It is based in Swansea and has 40 offices nation wide throughout the United Kingdom.
4.A.2 The Complainant is an Executive Agency of the United Kingdom Government’s Department for Transport. It is responsible for issuing and, where appropriate, withdrawing driving licenses, for licensing and registering vehicles, and for collecting vehicle excise duty. The Complainant maintains records of 40 million licensed drivers and 31 million licensed vehicle keepers and controls all statutory documents related to those records.
4.A.3 The Complainant issues some 7 million driving licenses, 9 million registration certificates and responds to more than 24 million enquiries from the police and the public on driver licensing and vehicle registration issues each year. It is responsible for the collection of some Ј4.9 billion per annum in Vehicle Excise Duty and assists ensuring that the public are protected from untaxed, uninsured and unsafe drivers.
4.A.4 Since 1989 the Complainant has been trading in the sale of unissued vehicle registration numbers to the public through two separate trading names. Exclusive and personalized registrations are sold by auction under the name DVLA Classic Collection. More affordable registrations sold by telesales under the name DVLA Select Registrations. Registrations considered to be less desirable than those sold by DVLA Classic Collection and DVLA Select Registrations were sold at auction by DVLA Custom Marks. Those three trading names have for the past 5 years been consolidated under one single brand name, DVLA Personalised Registrations. These activities have realized over Ј1 billion in revenue.
The DVLA registered trademarks
4.A.5 The Complainant has the following United Kingdom registered trademarks.
|Mark ||Registration No. ||Class(es) ||Date Registered |
DVLA Classic Collection
|2,203,115 ||35, 42 ||July 15 1999 |
DVLA Select Registrations
|2,203,118 ||35, 42 ||July 15, 1999 |
DVLA Custom Marks
|2,217,273 ||35, 42 ||December 16, 1999 |
DVLA and logo
|2,297,000 ||6, 9, 12, 16, 20, 25, 35 and 42 ||April 3, 2002 |
|2,297,001 ||6, 9, 12, 16, 20, 25, 35 and 42 ||April 3, 2002 |
DVLA Driver and Vehicle Licensing Authority
|2,297,002 ||6, 9, 12, 16, 20, 25, 35 and 42 ||April 2, 2002 |
4.B The Respondent
4.B.1 No Response has been filed. Consequently, what is known about the Respondent is derived solely from the Complaint, correspondence between the parties exhibited to the Complaint and from the Panel’s own review of the Respondent’s websites discussed below.
4.B.2 The Respondent, UK Hire Services, registered the domain name in issue on June 14, 2007. There is also a registered company by the same name, UK Hire Services Ltd. That company was incorporated on October 18, 2000 and has the same address as the Respondent.
4.B.3 The domain name in issue resolves to a website which offers an “End of Life Vehicle and Scrap Car” collection service. Specifically, the website states:
“If you have a vehicle for disposal please enter your details below and we will contact you to arrange a free removal. Your registration document will also be processed to up date the keepers register at Swansea to reflect that you no longer own the vehicle.”
4.B.4 The Respondent is also the owner of the domain names <ukautomovers.co.uk> registered on September 6, 2005 and <cars4scrap.com> registered on June 20, 2007. The latter resolves to a website which advertises the Respondent’s “end of life vehicle and scrap collection service”. Indeed, it specifically offers to process the necessary “… paperwork to satisfy the legal requirements that release you from fines imposed by the DVLA for keeping an unlicensed vehicle in the street or on your private property at home”.
5. Parties’ Contentions
5.A.1 The domain name in issue incorporates the Complainant’s DVLA registered trademarks and, accordingly, is confusingly similar to those trademarks.
5.A.2 The Complainant contends that the Respondent has no rights to or legitimate interests in the domain name in issue. The Complainant has not licensed or otherwise authorized the Respondent to use the DVLA trademark. The Respondent is not, the Complainant says, using the domain name in connection with a bona fide offering of goods or services, nor is its use of the domain name a legitimate non commercial or fair use. In that connection the statement at the website to which the domain name resolves (see, paragraph 4.B.3 above) refers directly to the Complainant as “the keepers register at Swansea” and is, the Complainant says, a clear indication that the Respondent is deliberately trying to create an association between the respective businesses of the parties. Consequently, the Respondent’s use of the domain name in issue is designed to mislead consumers and thereby to obtain a benefit from the Complainant’s very well known DVLA trademark and identity.
5.A.3 As to registration in bad faith, the Complainant refers to the fact that the DVLA name has been in use for 18 years, that there have been registered trademarks since 1999 and that it is a very well known trademark in the United Kingdom. It follows, the Complainant says, that the Respondent must have been on notice of its rights in the DVLA mark when registering the domain name in issue in June 2007. Consequently, the Complainant says that such registration was made in bad faith.
5.A.4 As to use in bad faith, the Complainant asserts that circumstances within paragraph 4(b)(i) and (iv) of the Policy apply in this case. With regard to paragraph 4(b)(i) the Complainant points to correspondence between the parties in June 2007. By email of June 18, 2007 the Complainant requested the Respondent to transfer the domain name in issue. In the Respondent’s reply of the same date Mr. Dunn wrote:
“I am afraid I cannot agree with your opinions as it appears pretty clear to us that at no time do we say or suggest on any of our webpages that we are associated with your organisation, nor do we display any information or logos copied from the DVLA site. We do provide a link to the DVLA website from our homepage at Cars4Scrap but this is simply for vehicle owners to obtain information on vehicle licensing. If this causes you concern and you would prefer that our site visitors were denied access to information via the link then we will be more than happy to remove it.
As regards your suggestion to transfer the domain name to DVLA. We would be prepared to consider this if you were able to offer a suitable transfer fee. You should be aware that we have already been offered a sum to transfer this web address to a third party and this offer is under consideration.” [Emphasis added]
5.A.5 As to bad faith use under paragraph 4(b)(iv) of the Policy, the Complainant relies on the content of the website to which the domain name resolves; see, paragraph 4.B.3 above.
As noted, no Response has been filed. The only communication from the Respondent is, in material part, set out in paragraph 5.A.4 above.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has established that it has rights in the DVLA trademark. The dominant portion of the domain name in issue comprises that DVLA trademark, the remainder consisting of the descriptive suffix “online”. Plainly, the domain name is confusingly similar to the Complainant’s DVLA trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.6 Here the issue is whether the Respondent’s use of the domain name is bona fide or a legitimate noncommercial or fair use. On the evidence, it is neither. The use cannot be bona fide unless it has been authorized by the trademark owner. No such authority or license has been given.
6.7 The Respondent points out in Mr. Dunn’s email of June 18, 2007 [paragraph 5.A.4 above] that it is not claiming any commercial connection with the Complainant and that the website merely gives visitors to the website a link to the Complainant’s website for informational purposes.
6.8 However, the Respondent is also – as stated in that email - the owner of the <cars4scrap.com> domain name which resolves to a website offering the same “end of life vehicle and scrap car collection service” as the website to which the domain name in issue resolves. References on that website to the DVLA’s requirements for unlicensed and scrapped vehicles are (see, paragraph 4.B.4 above) entirely permissible. However, this serves to illustrate why it is unnecessary for the Respondent also to incorporate the Complainant’s registered trademark into a domain name and website offering the same services. While it may be permissible to use the Complainant’s trademark to direct members of the public to the Complainant’s website for informational purposes, it is quite another thing to make unauthorised use of that trademark for a commercial enterprise having no connection whatever with the Complainant. Such use is not a bona fide offering of goods or services. Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
6.9 As to registration, the Panel has no hesitation in finding for the Complainant. The Respondent must be taken to have had knowledge of the DVLA mark in June 2007 and, absent license or authorization, registration of a domain name incorporating that trademark as the dominant and distinctive feature of the domain name is bad faith registration.
6.10 As to use, absent rights or legitimate interests in the domain name in issue, use of that domain name on the facts set out above falls within paragraph 4(b)(iv) of the Policy for the same reasons as set out in paragraph 6.8 above. Further, given that the domain name in issue was registered on June 14, 2007, and that 4 days later the Respondent – in reply to a “cease and desist” email from the Complainant – offered to sell the domain name at an undisclosed price (implicitly a price in excess of the out-of-pocket costs directly related to the domain name) is another indicia of bad faith use.
6.11 In the circumstances, the Complaint satisfies the two requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <dvlaonline.com> be transferred to the Complainant.
Dated: March 5, 2008
Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1904.html
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