The Complainant is Gerard & Laura Murtagh, trading as Wheelchair Cars Ireland, Ireland, internally represented.
The Registrant is Donal Murtagh Mobility Ltd., Ireland, internally represented.
The disputed domain names <wheelchairaccessiblecarsireland.ie>, <wheelchaircarireland.ie>, <wheelchaircars-ireland.ie>, and <wheelchaircarsireland.ie> are registered with IE Domain Registry Limited (“IEDR”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2019, via email. On September 10, 2019, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain names. On September 11, 2019, IEDR transmitted by email to the Center its verification confirming the registrant and contact information for the disputed domain names.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on September 16, 2019. In accordance with the Rules, paragraph 5.1, the due date for Response was October 14, 2019. The Response was received by the Center on October 8, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on October 15, 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.
From at least as early as 2008 (the exact starting date is in dispute), the first-named Complainant, Gerard Murtagh, traded in partnership with his brother Donal Murtagh under the name “Donal Murtagh Car Sales”. The brothers later became directors of a company, Wheelchair Cars Ireland Limited, incorporated on February 13, 2012 (“the Old Company”). The Old Company, and the partnership, used the additional trading name “Wheelchair Cars Ireland”.
The relationship between the brothers broke down in around 2014 and the Old Company went into liquidation with effect from August 10, 2015.
On December 3, 2014, the Registrant company was incorporated with Donal Murtagh’s father in law and sister in law as directors, and Donal Murtagh as an employee.
From around 2014, Gerard Murtagh, and his wife Laura Murphy, the second-named Complainant, started trading in partnership under the name “Wheelchair Cars Ireland”, which was registered as a business name on December 12, 2014. (Both Complainants are collectively referred to hereafter as “the Complainant”, except where it is necessary to refer to them separately.). The Complainant promoted its business on a number of websites including at <wheelchaircarsireland.com>.
Since 2014, both the Complainant and the Registrant have conducted the same kind of business as the Old Company – the supply, servicing, and adaptation of wheelchair accessible vehicles.
The Registrant registered the disputed domain names <wheelchaircars-ireland.ie> and <wheelchairaccessiblecarsireland.ie> on October 16, 2015.
In a decision dated December 31, 2015, Donal Murtagh v. Gerard Murtagh, WIPO Case No. DIE2015-0006, the panel declined to order transfer of <donalmurtagh.ie> and <donalmurtaghmobility.ie> to Donal Murphy (“the First Case”).
The Registrant registered the disputed domain names <wheelchaircarireland.ie> on January 9, 2016, and <wheelchaircarsireland.ie> on April 5, 2018. The latter was previously owned by the Complainant but had been allowed to lapse by mistake.
The Registrant uses the disputed domain names <wheelchaircarsireland.ie> and <wheelchaircarireland.ie> to redirect to its website at “www.dmmobility.ie”, which is branded with the name of the Registrant plus the “strapline” “Wheelchair Accessible Vehicles & Conversion Specialists” as well as the heading “Mobility Vehicles in Ireland”. The Registrant goes on to describe itself as “the leading specialist in the supply and conversion of mobility vehicles in Ireland”. It states that it has over 60 “Wheelchair Accessible Vehicles” in stock.
The disputed domain names <wheelchaircars-ireland.ie> and <wheelchairaccessiblecarsireland.ie> resolve to their own webpages bearing the same Registrant branding and strapline on the Registrant’s site as mentioned above. Clicking on the links on those pages brings the user to the Registrant’s site at “www.dmmobility.ie”. The <wheelchairaccessiblecarsireland.ie> and <wheelchaircars-ireland.ie> pages are similar to the homepage of the Registrant’s site, except that the latter includes a prominent heading: “Wheelchair Cars Ireland”.
A summary of the Complainant’s contentions is as follows:
The Complainant owns the protected identifier “Wheelchair Cars Ireland” by virtue of its registered business name and the Complainant’s trading activities since 2005.
The Complainant has invested huge amounts of time and energy in the “Wheelchair Cars Ireland” business, including advertisements.
The disputed domain names are identical or misleadingly similar to the Complainant’s protected identifier. The disputed domain names are all variations of the name of the Complainant’s business. The disputed domain name <wheelchairaccessiblecarsireland.ie> adds the word “accessible”, and <wheelchaircars‑ireland.ie> is a typographical variation which people looking for the Complainant’s website might type by mistake.
The Registrant has no rights in law or legitimate interests in the disputed domain name.
Donal Murtagh no longer trades in the motor business. The Registrant has no previous history or qualifications in the motor industry or disability sector. It is using the Complainant’s knowledge, trade names, and business. The Registrant has no association with the Murtagh name as the surnames of the directors are different. The daughter / sister of the Registrant’s directors had first-hand knowledge of the Complainant’s business since 2005. This individual married the complainant’s former colleague who now continues to work for the Registrant.
The Registrant has no history in the wheelchair car industry, whereas the Complainant has a significant involvement in this industry, much of it using the protected identifier.
The Complainant is continuing the “family legacy”.
While the Registrant undertakes similar business activities to those of the Complainant, the Registrant uses the word “mobility” and its own website is at “www.dmmobility.ie”. It has no use for the term “wheelchair cars”. While the Registrant advertises itself on its website as wheelchair accessible vehicle and conversion specialists, elsewhere it says that it is an expert in mobility vehicles. The Registrant’s site does not mention “wheelchair cars”. When advertising, the Registrant uses only its domain name, not the protected identifier. The Registrant uses the latter primarily by way of deception to funnel the Complainant’s business to itself.
Use of the disputed domain names to redirect to the Registrant’s website or to similar pages which themselves redirect to the Registrant’s website, including use of the heading “Wheelchair Cars Ireland”, is blatant traffic diversion.
The disputed domain names are being used in bad faith and to commit passing off, including for the reasons above.
The disputed domain names were registered to block and disrupt the Complainant in accordance with paragraphs 2.1.2 and 2.1.3 of the IEDR Policy. The Registrant has also attempted to create confusion with the Complainant’s protected identifier in accordance with paragraph 2.1.4 of the IEDR Policy.
Use of the heading: “Wheelchair Cars Ireland” on the <wheelchaircars-ireland.ie> webpage clearly targets the Complainant.
The Registrant’s moving location notice infers that the business once existed somewhere other than Moate, Ireland. This is untrue, as the Registrant’s business has always been in Moate and the phrase is only there to make people think that the Complainant has moved and has possibly been rebranded, as the name Donal Murtagh is widely associated with the Complainant.
In January 2015, the Registrant asked the operator of the website at “www.assistireland.ie” to change the address on the Complainant’s listing to that of the Registrant. This is a further example of bad faith.
In July 2016, the Registrant posted on Facebook that it had done business with the jockey JT McNamara when the Registrant’s company did not then exist. The business was done by the Old Company.
Having taken the name “Donal Murtagh”, which is known all over the country and is synonymous with the Complainant, the Registrant is now going after the name “Wheelchair Cars Ireland”.
The Registrant’s profile on “www.carsireland.ie” falsely claims that the company has been trading for 17 years.
While “Wheelchair Cars Ireland” uses generic words, they are synonymous with the Complainant’s business, a business built up over a decade and which has acquired a good reputation. When people enter the name in the search engine, they expect to find the Complainant, not the Registrant.
A summary of the Registrant’s contentions is as follows:
The Registrant was incorporated with a view to continuing the type of business which the brothers had previously carried on, namely one specialising in wheelchair accessible vehicles and adaptation of vehicles for such purpose.
Donal Murtagh is the highest-ranking executive of the Registrant and is widely known and regarded in the disability sector throughout Europe for his experience in conversion of vehicles for the disabled. He has undergone relevant certified training.
Donal Murtagh transferred his IP rights in “the domain names and phrases” from “his” previous company.
The First Case states that Gerard Murtagh acknowledged that both he and his brother were well known in the target market under the umbrella of “Donal Murtagh Cars” or “Wheelchair Cars Ireland”. The panel also said that the circumstances of this family dispute were complex and more suitable for resolution in a court.
The Complainant failed to disclose some relevant facts, including that “Donal Murtagh Car Sales” was originally established by Donal Murtagh and that Donal Murtagh has been working in the disability mobility sector for 20 years.
The Complainant does not carry on the family legacy or business as the Old Company went into liquidation.
The Complainant cannot establish rights in a relevant protected identifier.
The Complainant does not possess a registered trade mark.
Nor can the Complainant demonstrate that it owns unregistered rights. The Complainant must show that the unregistered name or mark has goodwill and reputation attaching to it that would be protected in the island of Ireland. The Registrant cannot demonstrate misrepresentation, the second element of the “triple test” for passing off as (1) the parties jointly operated under the name “Donal Murtagh Car Sales” and the Old Company, (2) Donal Murtagh was formerly the owner of <wheelchaircarsireland.com>, and (3) Donal Murtagh first conceived the name “Wheelchair Cars Ireland”.
The disputes between the parties can only be resolved in the national courts.
The Complainant acted in bad faith by publishing a photograph of the Registrant’s premises on its website without permission. This was an attempt to attract and confuse the Registrant’s customers. Taking this into account, the Registrant has no exclusive rights to exploit the name “Wheelchair Cars Ireland”.
The First Case established that the Donal Murtagh / the Registrant have legitimate interests in the disputed domain names. Donal Murtagh transferred his intellectual property rights, including in “Wheelchair Cars Ireland”, to the Registrant. The Complainant admitted in the First Case that both brothers were well known in the target market for “Wheelchair Cars Ireland”. Donal Murtagh owned <wheelchaircarsireland.com> from 2008 until 2014.
The term “Wheelchair Cars” is a generic term reflecting the Registrant’s business which supplies mobility vehicles in Ireland. Google searches for “Wheelchair Cars Ireland” and “Wheelchair Cars” bring up thousands of results. The use of a common word as a domain name in connection with a bona fide offering of goods or services constitutes a legitimate interest.
The Complainant has not submitted sufficient evidence to establish bad faith.
Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain names are identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered or are being used in bad faith.
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
At this point it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd., WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited, WIPO Case No. DIE2018-0006.
Section 1.3 of WIPO Overview 3.0 explains that to establish unregistered or common law trade mark rights for the purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
In the Panel’s view, this approach applies equally to paragraph 1.3.1 of the IEDR Policy. The Panel disagrees with the Registrant’s assertion that the Complainant must establish all of the elements of passing off. All that is required under this first element of the IEDR Policy is for the Complainant to demonstrate goodwill and reputation attaching to the mark such that it is capable of protection under the law of passing-off in Ireland. Any rights of the Registrant are not relevant at this point, although such matters will of course fall to be considered under the second and third elements of the IEDR Policy.
See also section 1.7 of WIPO Overview 3.0, explaining that it is well accepted that this first element functions primarily as a “standing” or “threshold” test.
Here, the Complainant has provided evidence, albeit limited, to the effect that it has been trading in the name “Wheelchair Cars Ireland” since 2014 and the Registrant has not seriously disputed this fact. The Panel is of the view that, for the purpose of this threshold test, the Complainant has established limited common law trade mark rights (for the purposes of the IEDR Policy) in the name “Wheelchair Cars Ireland” as a source of the Complainant’s products or services. In the Panel’s view, that suffices to constitute a protected identifier for the purpose of the IEDR Policy.
The Panel would add that, in accordance with section 1.3 of WIPO Overview 3.0, even though the Panel has found that the Complainant has standing based on unregistered common law trade mark rights, the strength of the Complainant’s mark will be relevant when evaluating the other element of the IEDR Policy.
The disputed domain names <wheelchaircars-ireland.ie> and <wheelchaircarsireland.ie> are effectively identical to the Complainant’s protected identifier.
The disputed domain names <wheelchairaccessiblecarsireland.ie> and <wheelchaircarireland.ie> are misleadingly similar to the protected indentifer. The first simply adds the descriptive term “accessible” and the second converts “cars” to “car”.
The country code Top-Level Domain “.ie” is disregarded for the purpose of this comparison.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name. Only paragraph 3.1.1 is relevant here, namely that “before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.
As regards the disputed domain names <wheelchairaccessiblecarsireland.ie>, <wheelchaircarireland.ie>, and <wheelchaircars-ireland.ie> (“the First Three Domain Names”), it is unnecessary for the Panel to make any finding under this second element as the Panel has concluded below that the Complainant has not established that they were registered or used in bad faith.
As regards the disputed domain name <wheelchaircarsireland.ie> (“the Fourth Domain Name”), for reasons explained below the Panel does not consider that it has been registered or used in connection with a good faith offering.
The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy in relation to the Fourth Domain Name.
As explained by the panel in the First Case, this dispute arises in the context of a “hotly contested” family dispute.
The brothers Donal and Gerard Murtagh previously traded as a partnership and, later, via the Old Company, using two business names: “Donal Murtagh Car Sales” and “Wheelchair Cars Ireland”.
After the relationship broke down in 2014, the brothers went their separate ways, but remained in the same industry.
In or around December 2014, Gerard Murtagh and his wife started trading as a partnership using the name “Wheelchair Cars Ireland”.
At about the same time, the Registrant was incorporated, with Donal Murtagh’s father-in-law and sister-in-law as directors. Donal Murtagh describes himself as the “Chief Executive Officer” and “highest-ranking executive” of that company. In any case, the panel in the Old Case concluded that he was an employee of the Registrant, and it is reasonably clear that he has been closely associated with the Registrant throughout.
The Complainant must have been aware of this. Yet the Complaint is evasive, seeking to give the impression that Donal Murtagh is unconnected with the Registrant. For example, the Complainant claims that Donal Murtagh no longer “trades in the motor business” and the Registrant “has no association” with the Murtagh name because the surnames of the directors are different. Only in the most oblique manner does the Complainant finally allude to Donal Murtagh’s involvement with the Registrant, referring to a “former colleague”, married to the daughter/sister of the directors, who continues to work for the Registrant.
Nor does the Complaint mention the First Case.
The Complainant would have been well advised to provide a more candid account of the background facts.
In any event, one striking feature of this case is that each party asserts long-standing rights in both trading names dating back to their use by the partnership and the Old Company.
So, for example, the Complainant complains about the Registrant having “taken” the name “Donal Murtagh”, which it claims is “synonymous” with the Complainant, apparently on the basis of the previous trading activities of the partnership and Old Company, but without explaining exactly how Gerard Murtagh personally had come to acquire such rights. Similarly, the Complainant refers to its “Wheelchair Cars Ireland” business as having been built up over a decade whereas the Complainant only started trading on its own account in 2014, i.e., five years ago.
And, for its part, the Registrant exhibits a declaration by Donal Murtagh claiming to have transferred to the Registrant his intellectual property rights arising from “my using of unregistered brand names, including ‘Donal Murtagh Cars’, ‘Wheelchair Cars lreland’, etc. since 2012”. He adds: “There was sufficient reputation attached to the services I and my company rendered in association with the unregistered trademark in the mind of the consumer.”
The First Case was dismissed, amongst other things, because of the lack of evidence as to whether any goodwill attached to the trading name (in that case “Donal Murtagh”) had transferred to the parties. And there is no such evidence in this case either in relation to “Wheelchair Cars Ireland”. For example, the Panel has not been provided with a document executed by the Old Company before its liquidation, or by the liquidator thereafter, assigning any goodwill or other rights to either brother. Nor is there any evidence that either brother somehow separately acquired prior independent rights in either trading name.
The Registrant has also pointed out that the summary of the party contentions in the First Case indicates that Gerard Murtagh claimed that “both he and his brother are well known in the target market under the umbrella of ‘Donal Murtagh Cars’ or ‘Wheelchair Cars Ireland’”.
The panelist in the First Case observed that it could be difficult without professional representation to understand the niceties of the legal issues involved. However, despite the findings in that case, each brother still appears to proceed on the assumption that he exclusively owns the rights arising from the historic use of the trading names, paying little heed to the separate legal status of the Old Company.
These circumstances make it difficult for the Panel to disentangle the Registrant’s motives. Did the Registrant register and use the disputed domain names in order to unfairly capitalise on the Complainant’s rights? Or principally because they reflected a name which Donal Murtagh regarded as “his”?
As regards the First Three Domain Names, the Panel notes that these were registered in October 2015 and January 2016, i.e., within a year or so of the brothers starting to trade independently. But the Complainant has not provided any dated evidence showing how its own business had developed, if at all, by the time the first of these disputed domain names was registered in October 2015; the panel in the First Case had pointed to a similar lack of such evidence in that case in relation to the “Donal Murtagh” trading name. Nor has the Complainant provided any dated archive evidence showing how, if at all, use of the First Three Domain Names had developed, particularly in the early days after they were registered. This may – or may not – have cast more light on the Registrant’s motives.
In the Panel’s view, the fact that the Registrant has diverted or resolved these disputed domain names to webpages offering the Registrant’s services does not, in the complicated circumstances of this case, indicate that the Registrant’s purpose was to unfairly capitalise on the Complainant’s rights rather than to use what Donal Murtagh (rightly or wrongly) considered “his” name for the same kind of goods and services for which the name had been used prior to the split. The same applies to the Registrant’s use of “Wheelchair Cars Ireland” on one of the websites as well as the other alleged acts of bad faith by the Registrant such as falsely claiming to have moved premises, to have been in business for 17 years and to have carried out certain business which was in fact undertaken by the Old Company. These matters are perhaps explicable, at least to some degree, by the Donal Murtagh’s assumption, like that of Gerard Murtagh, that he was the true “inheritor” of the previous business name use, as explained above.
The Panel understands that, from 2008 until 2014, Donal Murtagh owned another domain name reflecting the name “Wheelchair Cars Ireland”, namely <wheelchaircarsireland.com>, which the Complainant now uses for a website. The Panel has not been told how that domain name came to be in the possession of the Complainant. But the fact that Donal Murtagh owned such a domain name until 2014 may indicate that his registration of the First Three Domain Names starting in 2015 was bona fide.
Given the background set out above, the Complainant has failed to convince the Panel that the Registrant registered or used the First Three Domain Names in bad faith, i.e., specifically to target the Complainant’s rights.
In reaching this conclusion, the Panel wishes to clarify that, although invoked by the Complainant, the Panel has not considered whether the Registrant has committed the tort of “passing off”. That cause of action would be a matter for a court. The Panel is concerned only with whether or not the disputed domain names have been registered or are being used in bad faith in accordance with the IEDR Policy. This involves the Panel assessing the Registrant’s state of mind based on the evidence before it. Here, the Panel has been hampered by the complicated background facts and the lack of clear information from the parties. It may well be that, as suggested by the panel in the First Case, this dispute is more suitable for resolution by a court rather than in this forum – at least in relation to the First Three Domain Names.
That said, the Panel considers that the circumstances surrounding the Registrant’s registration of the Fourth Domain Name (<wheelchaircarsireland.ie>) are significantly different – and somewhat clearer. This registration occurred far more recently, in 2018, by which time the Complainant had been trading for longer. More importantly, the Registrant must have been aware that this disputed domain name had until recently been owned by the Complainant (which had let it lapse by mistake) and, also, that it corresponded exactly to the Complainant’s domain name <wheelchaircarsireland.com>. On balance the Panel considers it reasonable to infer that the Registrant’s dominant motive in registering the Complainant’s former domain name in these particular circumstances was to capitalise on the Complainant’s rights.
Panel therefore finds thatthe Complainant has established the third element of paragraph 1.1 of the IEDR Policy in relation to the Fourth Domain Name.
Finally, the Panel wishes to add that it is unfortunate that the parties have now had to resort twice to domain dispute resolution proceedings and may yet end up in court. The Panel hopes that, perhaps with the help of a mediator, then can yet reach some form of co-existence so that going forward they can concentrate on their respective businesses rather than having to engage in constant legal battles in various fora.
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name, <wheelchaircarsireland.ie>, be transferred to the Complainant, but that the Complaint is denied in relation to the disputed domain names, <wheelchairaccessiblecarsireland.ie>, <wheelchaircarireland.ie>, and <wheelchaircars-ireland.ie>.
Adam Taylor
Sole Panelist
Dated: November 18, 2019