The Royal Automobile Club of W.A (Inc) v Domain Privacy

WIPO Case No. D2025-2026

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Royal Automobile Club of W.A (Inc) v. Domain Privacy

Case No. D2025-2026

1. The Parties

The Complainant is The Royal Automobile Club of W.A (Inc), Australia, represented by Corrs Chambers

Westgarth, Australia.

The Respondent is Domain Privacy, Australia.

2. The Domain Name and Registrar

The disputed domain name <rac.claims> is registered with Synergy Wholesale Accreditations Pty Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2025. On connection with the disputed domain name. On May 26, 2025, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2025.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 11, 2025. 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

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4. Factual Background

The Complainant is part of a group, headquartered in Western Australia, which provides a range of services including roadside assistance, towing and accident repair services amongst other things. Through one of its associated entities, RAC Insurance Pty Ltd, it provides insurance services including car and accident

insurance under the name and sign RAC.

The Complainant operates a website at “ According to the history page on that website, the Complainant and its associates trace their roots back to 1905 when a group of motorists in Western Australia came together to form the Automobile Club of Western Australia. The Complainant claims, however, it has been using the trademark RAC since the 1930s. According to the website, the Complainant now has some 1.3 million members in Western Australia. Its insurance services have received 5-star rating by Canstar for five years running.

The Complainant owns at least two registered trademarks:

(1)	Australian Registered Trademark No 730522, RAC, which was registered with effect from March 21, 1997, in respect of a range of goods and services in International Classes 16, 35, 36, 37, 39, 41 and 42 including, amongst other things, insurance services and car and vehicle maintenance and repair services; and
(2)	Australian Registered Trademark No 1576466 for the figurative mark:

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After the Complainant’s lawyers sent a cease and desist letter to Liberties Insurance, the website to which the disputed domain name resolved was changed to replace the heading “RAC Claims” with “Rapid Action Collision Claims”.

At the time of writing, the disputed domain name does not appear to resolve to an active website.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent
at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with
paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep
up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair
opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

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

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

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark.

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has proven ownership of registered trademarks for both RAC and the figurative version of
RAC.

The comparison of the disputed domain name to the Complainant's trademark simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level
Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section
1.11.

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It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark,

however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The
figurative elements of the Complainant’s trademarks are not so dominating that the verbal element cannot be
considered an essential or important part of the trademarks in this case. Accordingly, it is appropriate to
apply the usual rule.

Disregarding the “.claims” TLD, the disputed domain name consists of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the
Respondent has rights or legitimate interests in a disputed domain name:

(i)        before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii)       [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii)      [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent registered the disputed domain name well after the Complainant began using the trademark and also well after the Complainant had registered its trademark.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The Respondent’s actual name is not known. However, it appears likely that the Respondent is Liberties also based in Perth (albeit apparently using a different telephone number), both are engaged in insurance

Insurances or the two are associated in some way. The Panel infers this from the facts that the

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and insurance claims processing and both use the expression “RAC Claims” and “Rapid Action Collision Claims”. Accordingly, on the information before the Panel it cannot be said that disputed domain name is derived from the Respondent's corporate name.

In the present case, however, it could be argued that “RAC” is an acronym for “Rapid Action Collision (or
Claims)”.

First, the registered business name is “Rapid Action Collision Claims” which one might expect would more naturally abbreviated to a four letter acronym, RACC.

Secondly, the business name was registered after the disputed domain name, albeit only one month later.

Thirdly, the business name associated with the website to which the disputed domain name resolves has
been chosen and adopted only recently. The rationale underlying the potential justification identified in
paragraph 4(c)(ii) is a recognition that names like a person’s birth name or a long used common name are
more likely to have been adopted independently of someone else’s trademark. In the present circumstances
where someone operating in the same (or much the same) field as the Complainant and from the same city
in Western Australia has adopted its business name only recently, it is necessary to show that the name has
been adopted in good faith. That is, at least without any intention to trade on the goodwill and reputation
associated the Complainant’s trademark. But that is not the only indication of good faith. A lack of good faith
may also be found where there is, or should have been, a recognition that the adoption of the name or, here,
a supposed acronym would be likely to cause confusion with the Complainant’s name and trademark. An

example in the context of trademark infringement is Anheuser-Busch Inc v Budějovický Budvar, Národní

Podnik [2002] FCA 390; 56 IPR 182 at [217] – [218].

In the present case, the Panel accepts that “rapid action collision claims” could be descriptive of a service. It is not so far as the Panel is aware a commonly accepted or used expression and there is no evidence before the Panel that suggests it is.

Further it seems that Liberties Insurances (assuming that it is the Respondent or associated with the
Respondent in some way) was well aware of the Complainant’s trademark and use of that trademark in
connection with insurance claims. The Panel infers this not just from the length and extent of the
Complainant’s use and the location of both the Complainant and Liberties Insurances in Perth but also the
statement under the “Why Choose Us” section of its website stating that it processed RAC Claims, Allianz
Claims and AAMI Claims.

Further still, no Response has been filed so no explanation has been offered attempting to justify the selection of the disputed domain name.

In these circumstances, the Panel declines to find that the business name and through it the disputed domain name has been adopted in good faith. Accordingly, on the material before the Panel, the possible application of paragraph 4(c)(ii) of the Policy would not be made out.

Taking all these matters together, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has

established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Group One Holdings Pte Ltd v. Steven Hafto WIPO Case No. D2017-0183.

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Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Given the Respondent’s connection with Perth or, at least, Western Australia, the Panel has no doubt that the Respondent was well aware of the Complainant and its trademark when adopting the disputed domain name. All the more so if the Respondent is in fact Liberties Insurances.

The reasons leading to the conclusion that the Respondent does not have rights or a legitimate interest in the disputed domain name lead also to the conclusion that the disputed domain name was registered in bad faith. The way the disputed domain name was used before the cease and desist letter from the Complainant’s lawyers constitute use in bad faith. It was at least likely to mislead the public into thinking the operator of the website was, or was associated with, the Complainant. Further, the Panel considers that the continued use of the disputed domain name after the cease and desist letter also constitutes use in bad faith under the Policy.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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.claims> be transferred to the Complainant.

/Warwick A. Rothnie/

Warwick A. Rothnie
Sole Panelist
Date: July 28, 2025

which has been registered with effect from August 23, 2013, in respect of a range of goods and
services in International Classes 9, 12, 16, 35, 36, 37, 39, 40, 41, 42, 43 and 45 including the services

already mentioned.

According to the WhoIs report, the disputed domain name was registered on December 24, 2024.

Initially, the disputed domain name resolved to a website which was prominently headed “RAC Claims” and underneath that “Your Roadside Champions”. The narrative text under this heading featured an invitation to call RAC Claims if one had an accident. The landing page also included in the top left hand corner a logo

comprised of a device of interlocking, horizontal tear drops and the words “Rapid Action Collision Claims”
stacked vertically on each other. The website prominently lists as the telephone contact number a number in
Perth or, at least, Western Australia.

The name “Rapid Action Collision Claims” was registered as a business name by Liberties Insurance Pty Ltd on January 28, 2025. Liberties Insurance Pty Ltd gave as the principal place of business for the business as an address in St Georges Terrace, Perth, the capital of Western Australia. St Georges Terrace is one of the main streets of the central business district.

According to printouts included in the Complaint, Liberties Insurance has a website promoting itself as providing “A New Generation of Insurance”. Under the heading “Why Choose Us?”, it includes text under the sub-heading “Best Claims Management” claiming “We offer expert management for RAC Claims, Allianz Claims and AAMI Claims. ….” Allianz and AAMI are two of the largest providers of insurance services, including car insurance services, in Australia.