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Driver and Vehicle Licensing Agency v. AAA AAA and Ash Manek [2004] GENDND 552 (26 May 2004)

1. The Parties

The Complainant is the Driver and Vehicle Licensing Agency, Marketing and Commercial Development Group B1, of Swansea, United Kingdom (hereinafter the "Complainant"), represented by Eversheds Solicitors, United Kingdom.

The Respondents are AAA AAA, United States of America and Ash Manek, Southampton, Hampshire, United Kingdom (hereinafter together to be referred to as the "Respondent").

2. The Domain Name and Registrar

The domain name at issue is <dvlaregistrations.com> (hereinafter the "disputed domain name").

The disputed domain name is registered with CSL Computer Service Langenbach GmbH doing business as Joker.com, Dusseldorf, Germany (hereinafter the "Registrar").

3. Procedural History

This action was brought in accordance with the Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Dispute Domain Name Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules").

The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2004. The Center acknowledged receipt of the Complaint on March 10, 2004. On March 10, 2004, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. The Registrar confirmed that Respondent AAA AAA is the registrant and that the Policy applies to the disputed domain name.

On March 12, 2004, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, including payment of the prescribed fee.

The Panel agrees with the Center's assessment concerning the Complaint's compliance with the formal requirements, be it that the Panel saw fit to give the Procedural Order to be mentioned below.

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 March 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2004.

The Center appointed Hub J. Harmeling as the Sole Panelist in this matter on April 21, 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.

As to the compliance of the Complaint with the formal requirements, the Panel found the following:

Under Paragraph 3(b)(v) of the Rules, the Complaint must provide the name of the Respondent and all information known regarding how to contact the Respondent, including contact information based on pre-complaint dealings. Pursuant to Paragraph 2(a)(iii) of the Rules, the Center will then send the Complaint to all known addresses of the Respondent to try and achieve actual notice of the Complaint.

The Complaint in this case mentions that the representatives of the Complainant sent an e-mail to the Respondent on October 22, 2003, and contacted him by telephone on February 5, 2004. In deviation from Paragraph 3(b)(v) of the Rules, the Complaint does not mention the e-mail address that was used for this e-mail message, nor the telephone number used. As a result, the Complaint was never forwarded to this email address.

On April 29, 2004, the Panel gave a Procedural Order by which it ordered the Center to send the Complaint to the relevant email address to ensure that all reasonably available means to achieve actual notice on the part of the Respondent would have been employed. The Respondent was given an additional 10 days to submit his Response.

No response was received from the Respondent in reply and no further submissions were received after the appointment of the Panel.

On the basis of the facts set out below, the Panel finds it justified to qualify not only the domain name owner presently mentioned in the WHOIS database, "AAA AAA" but also Mr. Ash Manek as Respondents in this case.

4. Factual Background

Driver and Vehicle Licensing Centre (DVLC) commenced operations in 1974, and changed its name to Driver and Vehicle Licensing Agency (DVLA) in 1990. DVLA is an Executive Agency of the Driver, Vehicle and Operator (DVO) group of organizations within the UK Government's Department of Transport, Local Government and Regions (DTLR). DVLA is responsible for issuing and, where appropriate, withdrawing driving licenses, for licensing and registering vehicles, and for collecting vehicle excise duty. The DVLA maintains accurate records of 40 million licensed drivers and 31 million licensed vehicle keepers, and controls all statutory documents related to these records.

In 1989, DVLA began selling un-issued vehicle registration numbers to the public through two separate trading names. Exclusive and highly-personalized registrations are sold through auction under the name "DVLA Classic Collection." "DVLA Select Registrations" is a telesales business that sells more affordable registrations. The sale of registration numbers under these two trading names has continued uninterrupted since 1989. In addition, DVLA uses the trading name "DVLA Custom Marks" to sell more affordable registrations by way of auction.

Since 1999, DVLA has registered the following marks in the UK:

Mark	Date Registered	T/M Number
DVLA Classic Collection	15/07/99	2203115
DVLA Select Registrations	15/07/99	2203118
DVLA Custom Marks	16/12/99	2217273
DVLA	03/04/02	2297000
DVLA	03/04/02	2297001
DVLA Driver and Vehicle Licensing Agency	02/04/02	2297002

The Complainant has been monitoring the disputed domain before submitting the Complaint. According to the WHOIS database maintained by Network Solutions, the owner of the disputed domain name, in the period before submitting the Complaint, was called Ash Manek.

In a letter of September 16, 2003, the representatives of the Complainant requested that this Ash Manek would voluntary transfer title in the domain name to the Complainant.

In another letter of October 1, 2003, the representatives of the Complainant notified Mr. Manek that they would seek instructions from the Complainant to commence proceedings against him within 7 days.

Finally, on October 22, 2003, the representatives of the Complainant sent an email to Mr. Manek, attaching copies of the above-mentioned letters.

On December 9, 2003, the Complainant's representatives discovered that Ash Manek is the registered owner of al least 90 domain names. A large portion of these domain names incorporate the registered trademarks of well-known third parties.

Through more research the representatives of the Complainant finally found that an Ashely Manek operated an online car dealership called "BroomBroom.com." The website provided a telephone number. In the telephone call, Ashley Manek admitted that he was the owner of the disputed domain name.

Shortly after the Complainant's representatives contacted the Mr. Manek about the disputed domain name by telephone on February 5, 2004, the registrant of the disputed domain name was changed in the WHOIS to "AAA AAA" without a valid home address, mentioning just the USA as country of residence.

5. Parties' Contentions

A. Complainant

The Complainant requests the Panel to direct that <dvlaregistrations.com> be transferred to the Complainant based on the following arguments:

Identical or confusingly similar

The Complainant is of the opinion that the disputed domain is confusingly similar to the Complainant's trademark for the following reasons: the disputed domain name incorporates the entire "DVLA" trademark of Complainant and the addition of the word "registrations" after the "DVLA" trademark in the disputed domain name is referencing to the Complainant's activity of issuing, managing and selling vehicle registration numbers.

Rights or legitimate interests

The Complainant asserts that the Respondent did not have Complainant's consent to use the trademark, or that the Respondent was licensed to use the trademark, or that the Respondent was affiliated in any way with the Complainant.

The Complainant has been monitoring the use of the disputed domain name. The Complainant asserts that the domain name has been pointing to the "free customer holding page" of UK2.NET, so that there is no bona fide offering of goods and services. The domain name no longer points to any Website.

In conclusion, the Complainant claims that the Respondent did not make a legitimate, non-commercial or fair use of the disputed domain name.

Registered and used in bad faith

The Complainant alleges that the Respondent's actions evidence an intent to register the domain name in bad faith: primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or a competitor of the Complainant for a valuable consideration (in excess of reimbursement of his out-of-pocket expenses) or, alternatively, to prevent Complainant to reflect the mark in a corresponding domain name.

The Complainant further contends that the disputed domain name is being used in bad faith because the following circumstances, mentioned as a basis for a finding of bad faith in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are also present in the case at hand:

(i) the fact that the Complainant's trademark had a strong reputation and was widely known;

(ii) the lack of evidence of any actual or contemplated good faith use by the Respondent;

(iii) the Respondent's attempt to conceal its identity;

(iv) false contact details provided by the Respondent to the registrar in breach of its registration agreement.

B. Respondent

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

6. Discussion and Findings

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative proceeding that each of the three elements of Paragraph 4(a) of the Policy are present:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being in bad faith.

A. Identical or Confusingly Similar

The disputed domain name incorporates Complainant's registered trademark "DVLA" in its entirety. Under the present circumstances, this incorporation of Complainant's trademark is sufficient to establish the confusing similarity required in Paragraph 4(a)(i) of the Policy (cf. also Lancôme Parfums et Beauté & Cie v. SL, Proteccion de Dominios, WIPO Case No. D2001-0910, Nikon, Inc. and Nikon Corporation v. Technilab., Inc., WIPO Case No. D2000-1774, Nicole Kidman v. John Zuccarini, d/b/a Cupcake party, WIPO Case No. D2000-1415).

Given the fact that Complainant's activities include selling un-issued vehicle registration numbers to the public, for which Complainant since 1989 also uses the trade name "DVLA Select Registrations," which is a registered trademark since 1999, the inclusion of the word "registrations" in the disputed domain name does not in any way take away this confusing similarity.

B. Rights or Legitimate Interests

The Panel notes that Complainant bears the "general burden of proof" under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See: Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones v. Hephzibah Intro-Net Project, WIPO Case No. D2000-0704.

The only indication in the case file that Respondent might have an interest in the domain name <dvlaregistrations.com> is the fact that - after the WHOIS record for this domain name had changed to obliterate the identity of the current holder - a new contact e-mail was entered in that record reading "digitalvideolosangeles.com." A person doing business as Digital Video Los Angeles could have an interest in the abbreviation "DVLA".

In the absence of a Response, the Panel finds this mere `suggestion' of a trade name insufficient to assume that the Respondent has been commonly known by Digital Video Los Angeles, let alone by the abbreviation DVLA, let alone by the name DVLAREGISTRATIONS or <dvlaregistrations.com> or that this name has been used in connection with any bona fide offering of goods or services.

The Panel further finds that, by first having the disputed domain name refer to the general holding page of the provider UK2.Net and by subsequently discontinuing the use of the disputed domain name altogether, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate non-commercial fair use of the domain name.

These findings, in conjunction with the circumstances that:

(i) Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the disputed domain name or any other domain name; and

(ii) Respondent's domain name is linked to no website that incorporates or references the domain name;

lead the Panel to its conclusion that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has mentioned two examples of bad faith named in Paragraph 4(b) of the Policy. Briefly stated: registration for the purpose of selling back to the trademark owner (Paragraph 4(b) under (i) of the Policy) and registration for the purpose of preventing the owner to reflect his trademark in a domain name (Paragraph 4(b) under (ii) of the Policy). Furthermore, the Complainant mentions the circumstances mentioned in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 to assume a case of bad faith on other grounds than those identified in Paragraph 4(b)(i), (ii) and (iii) of the Policy.

The Panel finds that the Complainant has not sufficiently established, even prima facie, that the disputed domain name was registered for the purpose of selling it back to the Complainant for valuable consideration. From the contentions in the Complaint, it appears that - even when approached by telephone by the Complainant - the Respondent did not request payment of a sum larger than the out-of-pocket costs.

The Panel further finds that also the allegation that the disputed domain name would have been registered in order to prevent the Complainant to reflect his mark in a corresponding domain name is insufficiently supported by the facts and circumstances brought forward by the Complainant.

The Panel will therefore consider whether there are grounds for bad faith present, other than those identified by way of example in Paragraph 4(b) of the Policy. In this respect, the Panel calls to mind that, in the Telstra case cited by the Complainant, the Panel did not formulate criteria for assuming bad faith, but rather determined that, when considering bad faith, the Panel "must give close consideration to all the circumstances of the Respondent's behaviour." The circumstances mentioned by the present Complainant (cited above under 5(A)) were merely the particular circumstances of the Telstra case which in that case lead the Panel to the conclusion of bad faith.

In the present case, the Panel therefore has closely considered all the circumstances of the Respondent's behaviour in assessing whether it finds a case of bad faith registration and use. The Panel finds that the requirement of Paragraph 4(a)(iii) of the Policy has indeed been met, taking into account in particular the following undisputed facts and circumstances:

(i) The Complainant is a Government Agency in the United Kingdom and is widely known in that country. The Respondent, having an address in the United Kingdom, is likely to have been aware of the Complainant's activities and of its trade names and trademarks including the abbreviation DVLA at the time of registration of the disputed domain name;

(ii) By adding the word "registrations" to the Complainant's trademark "DVLA" to form the disputed domain name, the Respondent's refers to an activity or service for which the DVLA trademark is actively being used and for which the Complainant is well known in the United Kingdom.

(iii) The Respondent has taken active steps to conceal its true identity and to frustrate effective contact with him, by removing any real names and contact details from the WHOIS register;

(iv) The Respondent has never actively used the disputed domain name, nor has he provided any evidence whatsoever of any contemplated good faith use of the disputed domain name.

In light of these particular circumstances, the Panel finds that the Respondent's activities in relation to the disputed domain name satisfy the requirement of Paragraph 4(a)(iii) of the Policy that the domain name "has been registered and is being used in bad faith."

7. Decision

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 <dvlaregistrations.com> be transferred to the Complainant.

Hub J. Harmeling
Sole Panelist

Dated: May 26, 2004