ACE Limited v Texas
International Property Associates
Claim Number: FA0707001045124
PARTIES
Complainant is ACE Limited (“Complainant”), represented by Sean
W. Dwyer, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <acelimted.com>, <aceinsuraceservices.com>,
<a-s-e.net>, and <aceinsuranceandtags.com>,
registered with Compana, LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
<a-s-e.net>, and <aceinsuranceandtags.com> domain names are registered with Compana,
LLC and that the Respondent is the current registrant of the names. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On August 6, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 27, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@acelimted.com, postmaster@aceinsuraceservices.com, postmaster@a-s-e.net,
and postmaster@aceinsuranceandtags.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission from Complainant was received and
determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant is a
Complainant submits that it is a
widely diversified global insurance and reinsurance provider, enjoying a high
degree of recognition throughout the world. Complainant began as a specialized
corporate insurer focusing on excess liability and directors and officer’s
liability. In 1995 Complainant commenced
providing strategic and alternative risk products, and excess property and
aviation product liability insurance. In
1996, Complainant extensively broadened its international exposure by entering
the
Members of Complainant’s group of
companies began to use the trademark ACE at least as early as 1985. Complainant entered the insurance markets in
the
In 2003, Complainant wrote USD $14,637 million in gross insurance premiums, had over 8,000 employees worldwide, and held USD $49.5 billion in total assets. In 2006 Complainant held total assets of USD $60 billion.
Complainant claims rights to the ACE trademark in association with the offering of insurance services through its large worldwide portfolio of registered trademarks. In total Complainant owns more than 200 registrations and pending applications for marks comprising in whole or in part the term ACE in numerous jurisdictions throughout the world. These registrations include word marks and design marks. The following is a representative sample:
United States Trademark registration number 2,778,828 ACE (word mark) issued November 4, 2003, with first use in commerce at least as early as November 1996, and registered for property and casualty insurance underwriting services.
United States Trademark registration number 2,106, 692, ACE ADVANTAGE (word mark) issued October 21, 1997, with first use in commerce at least as early as November 1996, for commercial property and casualty insurance underwriting services;
CTM registration number 00661827,
ACE (figurative), registered
CTM registration number 2305787, (figurative)
registered
United Kingdom of Great Britain and
Northern Ireland trademark registration number 2148430, ACE (device mark)
registered
Australian trademark registration
number 1068664, ACE INSURANCE LIMITED (word mark) registered from
Complainant submits that it is the owner of exclusive rights in the above registered trademarks and the rights established by the registrations establish Complainant’s prima facie rights and shifts the burden onto the Respondent to prove otherwise. Citing inter alia: Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Complainant furthermore claims rights at common law established through its long and extensive use of the ACE, ACE LIMITED and ACE INSURANCE LIMITED marks as well as other trademarks incorporating the word “ace.”
Complainant argues that Respondent’s <acelimted.com>, <aceinsuraceservices.com>, and <aceinsuranceandtags.com> domain names are confusingly similar to Complainant’s above trademarks and in particular the ACE trademark because they add generic terms, as well as the addition of the generic top-level domain (“gTLD”) “.com” to the mark, which is reflected in its entirety. Two of these generic terms are misspelled. However, Complainant alleges that these additions and misspellings are insignificant deviations and insufficient to create a separate and distinct mark, and do not detract from Complainant’s ACE mark as the dominant portion of the disputed domain names.
Complainant also alleges that Respondent’s <a-s-e.net> domain name is confusingly similar to Complainant’s ACE mark. It is noteworthy that in a single instance in the Complaint, Complainant refers to this disputed domain name as <a-c-e.net> for purposes of arguing confusing similarity. The correct domain name is <a-s-e.net>, which is reflected accurately throughout the rest of the Complaint. Complainant submits that this disputed domain name replaces the “c” in Complainant’s mark with an “s,” and adds hyphens and the gTLD “.net.” Complainant alleges that these additions, as well as the misspelling, render the <a-s-e.net> domain name confusingly similar to Complainant’s ACE mark under Policy ¶ 4(a)(i).
Complainant submits that potential and existing
customers will mistype Complainant’s mark when searching for its products and
services on the Internet and thus will be diverted to Respondent’s websites.
Citing State Farm Mut. Auto. Ins. Co. v.
Try Harder &
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant submits that Respondent has no rights or legitimate interests in the domain names in dispute. Policy ¶ 4(c) establishes factors through which Respondent can establish rights to and legitimate interests in, a disputed domain name. An analysis of these factors shows that Respondent lacks any such rights or legitimate interests in the domain names in dispute in this proceeding.
Complainant alleges that Respondent cannot establish any use of or demonstrable preparations to use, the domain names, or a name corresponding to the domain names, in connection with a bona fide offering of goods or services Policy ¶ 4(c)(i). The evidence shows that Respondent is using the domain names in dispute to operate websites that feature links to third party websites offering products and services which compete directly with Complainant as well as third party websites offering non-competing goods and services. Complainant alleges that these third party websites pay referral fees to Respondent for each viewer of the websites established at the addresses of the domain name in dispute.
Furthermore Complainant argues that
panels appointed in past cases brought under the Policy have found that the
present Respondent has engaged in the business of registering domain names that
are identical or confusingly similar to well known trademarks. Complainant has submitted a list of such cases
as an annex to the Complaint including: JELD-WEN,
Inc. v.
Complainant alleges that Respondent’s use of the domain names in this manner to divert Internet users to the commercial websites of others is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a non-commercial or fair use as contemplated by Policy ¶ 4(c)(iii).
Furthermore Complainant alleges that Respondent is not commonly known by the disputed domain names, and asserts that Respondent has not provided any evidence in the record indicating otherwise. The WHOIS information identifies Respondent as “Texas International Property Associates.”
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant alleges that Respondent has a history of registering domain names that contain registered trademarks of others. Complainant cites several UDRP decisions finding that Respondent did not have rights or legitimate interests in confusingly similar or identical domain names that were registered and used in bad faith.
Complainant asserts that Respondent’s registration and use of the disputed domain names containing various misspellings constitutes typosquatting.
Complainant submits that Respondent had both actual and constructive knowledge of Complainant’s rights in the ACE family of trademarks when the domain names were registered and used as the addresses of the Respondent’s websites. Registration of the domain names in dispute when Respondent had such actual and constructive knowledge of Complainant’s rights give rise to a presumption of bad faith registration pursuant to Policy ¶ 4(a)(iii). Citing Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), and Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2002).
Complainant submits that having registered the domain name in bad faith, Respondent is using the disputed domain names to display a list of hyperlinks advertising services that compete with Complainant. Such use disrupts Complainant’s business by diverting potential customers to Respondent’s website. Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent’s use of confusingly similar domain names to advertise competing services creates a likelihood of confusion among customers searching for Complainant’s services. Complainant asserts that Respondent receives referral fees from these redirected Internet users, and is therefore attempting to profit from the goodwill associated with Complainant’s ACE mark. Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
B. Respondent
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
In
a vigorous Response, Respondent contends that the <acelimted.com>, <aceinsuraceservices.com>, <a-s-e.net>, and <aceinsuranceandtags.com> domain names are comprised of generic terms, and
therefore cannot be found to be confusingly similar to Complainant’s ACE marks.
Respondent alleges that its <acelimted.com>, <aceinsuraceservices.com>,
and <aceinsuranceandtags.com>
domain names are not confusingly similar because they add generic, descriptive
terms which distinguish the disputed domain names from Complainant’s ACE mark.
A search of <whitepages.com> for the words “ace
insurance” generates 642 listing across the
Respondent argues that Complainant lacks exclusive
rights in the ACE trademark and cites Media
West-GSI, Inc & Gannet Satellite Info. Nework Inc. v. EARTHCARS.COM, Inc.,
D2000-0463 (WIPO July 31, 2000) (“whatever the length of use by one party, use
of part or all of the mark by third parties weakens the mark’s overall strength.”).
Respondent argues that registration on
the principal register does not absolutely protect marks on the “weaker end of
the spectum” and cites inter alia Eauto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000) in
support of this assertion.
Given the weakness of Complainant’s marks and the
striking difference between them and the domain names in dispute, there is
little or no liklihood that the average Internet user would confuse
Complainant’s alleged mark with the domain names <aceinsuranceservices.com> and <aceinsuranceandtags.com>.
The domain name <acelimted.com> incorporates the word “ace” along with the
generic and descriptive word “limited” albeit with the misspelling of
“limited”. Respondent submits that
Complainant uses the words ACE LIMITED as a tradename and not as a trademark. Respondent argues that it is well established
that a trade name is not entitled to protection afforded toa trademark or
service mark. Citing “It is well settled
that the Policy does not protect trade names or company names when this is the
extent of their use.” Franklin Mint Fed.
Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum June 24, 2003).
There is at lease one other user of the name ACE
LIMITED in the
Respondent’s <acelimted.com>,
<aceinsuraceservices.com>, and
<aceinsuranceandtags.com>
domain names are not confusingly similar to Complainant’s ACE mark pursuant to
Policy ¶ 4(a)(i).
Respondent also alleges that its <a-s-e.net> domain name is not confusingly similar to
Complainant’s ACE mark. Respondent
states that the most results from an Internet search for “
Furthermore almost all
registrations owned by Complainant are for design marks. Respondent cites numerous decisions to support
its argument that rights in stylized and design marks are distinct from rights
in a word mark.
Descriptive and generic terms
provide no rights under the Policy under any circumstances even if they are
registered. Citing Goldberg
& Osborne v. Advisory Bd. Forum Inc., D2001-0711 (WIPO Oct. 4, 2001).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent contends that Complainant does not have
exclusive rights to the ACE mark because it is a common term that can be used
to describe many different things.
Respondent asserts that the addition of generic,
descriptive terms, such as the ones used in the disputed domain names,
sufficiently distinguish the disputed domain names from Complainant’s mark such
that Respondent has rights or legitimate interests in the disputed domain
names. Respondent has rights or
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Citing Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb.
19, 2001) (finding that the respondent has rights and legitimate interests in
the domain name where “Respondent has persuasively shown that the domain name
is comprised of generic and/or descriptive terms, and, in any event, is not
exclusively associated with Complainant’s business”); see also FilmNet Inc. v.
Onetz, FA 96196 (Nat. Arb. Forum
Feb. 12, 2001) (finding that the complainant failed to establish that the
respondent did not have rights or legitimate interests in the
<filmnet.com> domain name, where the disputed domain name is wholly
comprised of generic words, even though the complainant is the owner of the
FILMNET mark).
Respondent chose the words in the domain names because
of their attractiveness as ordinary dictionary words and being entitled so to
do has acquired rights and legitimate interests in the domain names. Citing Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum, Aug. 6, 2004) in
which the panel held that as long as the domain names have been registered
because of their attraction as dictionary words, and not because of their value
as trademarks, this business model is permitted under the Policy.
Respondent alleges that the hyperlinks on the webpage that
resolves from the disputed domain names advertise a broad range of
services. Respondent also contends that
the advertising revenues generated demonstrate a legitimate interest in the
disputed domain names, especially considering the common nature of the
terms. Respondent’s use of the disputed
domain names constitutes a bona
fide offering of goods and services under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent contends that the
disputed domain names are comprised of common terms that may refer to many
things other than Complainant’s insurance services offered under the ACE
mark. The disputed domain names contains
commonly-used terms, and therefore that Respondent did not register and use the
disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Respondent also disputes that it had, or should have had, actual or constructive knowledge of Complainant and its services. Respondent contends that it should not be required to check the USPTO registry whenever wishing to register a domain name. Instead, Respondent advances the argument that “first in time is first in right,” so since Respondent registered the disputed domain names before Complainant, Respondent did not register or use the disputed domain names in bad faith.
C. Additional Submissions
In timely Additional Submissions, Complainant re-asserts its exclusive
rights in the marks ACE, ACE LIMITED, ACE INSURANCE, ACE INSURANCE LIMITED
through its registrations and use.
Complainant denies that any of these marks are generic. The term “generic” being
defined in the Trademark Manual of Examining Procedure as “terms that the
relevant purchasing public understands primarily as the common or class name
for the goods or services.”
Addressing the strength of its rights, Complainant asserts that most of
its registrations in the
While the word “ace” may be a popular term, Respondent is confusing the
popularity of a term with a term being generic.
The Respondent is wrong in asserting that the combination of two generic
words results in a generic trademark. In
fact there is authority for the proposition that the combination of two generic
words, when combined in an arbitrary fashion may result in a distinctive mark.
The results of the search presented by Respondent as evidence that the
mark ACE is generic merely shows that the word “ace” is a popular business name
and many of the companies no not provide insurance services. The search merely proves that Complainant
should be more vigilant in policing and enforcing its rights in the ACE mark.
Respondent has submitted that another company uses the name ACE LIMITED.
In fact that company uses the name ACE
Complainant has registered the words ACE LIMITED as a trademark in
While many of Complainant’s registrations are for design or logo type
marks, the mark ACE has been registered as a work mark in respect of insurance
services in the United States of America, Canada, United Kingdom of Great
Britain and Northern Ireland, China, Mexico, Australia, Argentina, Germany,
France.
Respondent cited the case Landmark
Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum Aug.
6, 2004) as authority for its claim to have rights and legitimate interest in
the domain names. Unlike in the Landmark case, Respondent is not
randomly combining generic terms to generate pay per click advertising profits.
Respondent is in contrast misspelling and combining additional matter such a hyphens or to Complainant’s registered trademarks.
Clearly the domain names in issue were chosen to be confused with
Complainant’s trademarks and were registered and are being used by Respondent
to profit from creating a false connection with Respondent’s trademarks.
FINDINGS
Having considered the submissions and the evidence
adduced this Panel makes the following findings of fact:
Complainant has established that it the owner of
rights in the trademarks ACE, ACE LIMITED, ACE INSURANCE, ACE INSURANCE LIMITED through its
large portfolio of registrations and its extensive use of the trademarks by its
group companies in relation to the provision of insurance services. Complainant first established rights in the
ACE mark in or about the year 1985 and has since continued to use that mark and
other marks incorporating the word ACE in relation to an expanding and very
substantial business in insurance services in the United States of America and
in many other jurisdictions throughout the world. While it was not expressly explained in the
Complaint or Additional Submissions or referred to in the Response, the CTM and
United Kingdom of Great Britain and Northern Ireland registrations are
registered in the name of ACE European Markets Limited, a company based in
The domain names in dispute were created on the
following dates:
<acelimted.com> was created on
<aceinsuraceservices.com>
was created on
<a-s-e.net>
was created on
<aceinsuranceandtags.com>
was created on
Each of the domain names in dispute resolve
to portal websites established by Respondent offering inter alia insurance services that on the face of it compete
directly with Complainant’s business.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
While the
Complainant’s marks are used in connection with the provision of insurance
services and as such are service marks, both Parties have referred to
trademarks and the Panel will follow suit.
Identical or
Confusingly Similar: Policy ¶ 4(a)(i).
Respondent has argued that the
trademark rights relied upon by Complainant are weak or non-existent, the
strength or weakness of Complainant’s trademarks is not relevant for the first
element of the test in Policy ¶ 4(a)(i). It is sufficient for Complainant to establish
that it has such rights in the relevant trademarks. Complainant’s above listed successful
trademark registrations with the USPTO and other registries throughout the
world, establish to the satisfaction of this Panel that Complainant has rights
in the trademarks ACE,
ACE LIMITED, ACE INSURANCE, ACE INSURANCE LIMITED sufficient for the purposes
of Policy ¶ 4(a)(i). See Mattel, Inc. v. KPF, Inc.,
FA 244073 (Nat. Arb. Forum
Furthermore Complainant is a very substantial international organization, operating on a global scale in the field of insurance and reinsurance and on the evidence Complainant has established substantial common law rights in the goodwill and reputation of said marks.
Respondent
contends that the <acelimted.com>, <aceinsuraceservices.com>,
<a-s-e.net>, and <aceinsuranceandtags.com> domain
names are comprised of generic terms, and therefore cannot be found to be
confusingly similar to Complainant’s ACE mark.
To determine whether the domain names in dispute are identical or confusingly similar to Complainant’s trademarks, it is necessary to take each of the domain names and trademarks and compare them in turn.
With regard to the domain name <a-s-e.net>, it is noted that in a single instance in the Complaint, Complainant refers to this disputed domain name as being <a-c-e.net> for purposes of arguing confusing similarity. The correct domain name is <a-s-e.net>, which is reflected accurately throughout the rest of the Complaint. When considering confusing similarity under Policy ¶ 4(a)(i), the domain name has been considered as <a-s-e.net> and not <a-c-e.net>.
This Panel is not satisfied that Internet users are likely to associate the domain name <a-s-e.net> with Complainant’s business. Outside of the “.net” extension there are five characters in the domain name. While the use of hyphens can often be ignored in comparing domain names and trademarks, in the present case the domain name <a-s-e.net> has only two characters namely the letters “a” and “e” in common with Complainant’s trademark. If the hyphens were not present, Complainant may well have had a stronger case in relation to this mark but in the circumstances of the present case Complainant has not satisfied this Panel that the domain name is confusingly similar to any of its trademarks.
The Panel is however satisfied that the domain name <acelimted.com> is confusingly similar to Complainant’s ACE LIMITED registered trademark. Furthermore this Panel is satisfied that both the domain names <aceinsuraceservices.com> and <aceinsuranceandtags.com> are confusingly similar to Complainants ACE INSURANCE registered trademarks.
Complainant’s USPTO trademark is for the ACE mark in association with offering of insurance services. One of the disputed domain names contains a misspelled version of the word “insurance,” and the other contains the correctly spelled “insurance” element in combination with the dominant element being the word “ace.” This combination adds to the confusing similarity of the disputed domain names because of the obvious reference to Complainant’s business. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
In the view of this Panel the additional descriptive element “services” in the domain name <aceinsuraceservices.com> and the words “and tags” which have implicit technical references to domain name and Internet technology in the domain name <aceinsuranceandtags.com> do not in any way serve to distinguish these domain names. In each case the word “ace” is the dominant element and the reference to insurance creates the confusion with Complainant’s marks.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i) in respect of <acelimted.com>, <aceinsuraceservices.com> and <aceinsuranceandtags.com>.
However Complainant has failed to establish a necessary element of the proofs to succeed in relation to the domain name <a-s-e.net> and it is not necessary to further analyze the other two elements of the Policy in relation to that domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (National Arbitration Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
When considering Policy ¶ 4(a)(ii), Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
names, and then the burden shifts to Respondent to show it does have rights or
legitimate interests. See
This Panel accepts Complainant’s submission that Respondent is not commonly known by the disputed domain names. Respondent has not provided any evidence in the record indicating otherwise. The WHOIS information identifies Respondent as “Texas International Property Associates.”
Respondent is not automatically entitled to claim that it has rights or a legitimate interest in the domain names because it has arranged for the disputed domain names to resolve to a portal website. The evidence is that the portal websites, to which the domain names in dispute resolve, published and maintained by Respondent, display a list of hyperlinks to third party websites that advertise inter alia services that compete with Complainant.
Because the domain names <acelimted.com>, <aceinsuraceservices.com> and <aceinsuranceandtags.com> are confusingly similar to Complainant’s trademarks such use cannot amount to a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii)
Furthermore in the view of this Panel, Respondent’s registration and use of the disputed domain names <acelimted.com> and <aceinsuraceservices.com> containing clear misspellings of Complainants marks constitutes typosquatting and it follows that such a finding is inconsistent with Respondent establishing right and legitimate interests in the disputed domain names <acelimted.com>, <aceinsuraceservices.com> and <aceinsuranceandtags.com> under Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
Complainant’s use of ACE LIMITED is more than mere use as a trade name or company name. While Respondent has argued that it is well settled that the Policy does not protect trade names or company names when this is the extent of their use. In the present case the use is not so limited.
Registration and Use
in Bad Faith: Policy ¶ 4(a)(iii).
Complainant has adduced sufficient
evidence to satisfy this Panel on the balance of probabilities that Respondent
is using the disputed domain names <acelimted.com>, <aceinsuraceservices.com> and <aceinsuranceandtags.com> to
display a list of hyperlinks advertising services that compete with
Complainant. Such use of domain names that are confusingly
similar to Complainant’s trademarks will inevitably result in the disruption of
Complainant’s business by diverting actual and potential customers away from
Complainant’s websites to Respondent’s websites. Respondent’s registration and use of the
disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding
that the respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a
website that displayed commercial links to the websites of the complainant’s
competitors); see also David Hall Rare Coins v.
Complainant has asserted that Respondent receives referral fees from these redirected Internet users, and is therefore attempting to profit from the goodwill associated with Complainant’s ACE mark. While there is no actual evidence that Respondent is in receipt of such income, it may be presumed that Respondent is receiving, or intends to receive, some benefit from its predatory use of Complainant’s trademarks and goodwill in this manner.
This Panel is also satisfied that Respondent had both actual or constructive knowledge of Complainant and its rights in the above trademarks when Respondent registered the disputed domain names in dispute. It is too much of a coincidence that it registered domain names that were confusingly similar not only to Complainant’s ACE mark, but also the marks ACE LIMITED and ACE INSURANCE LIMITED.
This Panel is satisfied that Respondent’s registration and use of the disputed domain names <acelimted.com>, <aceinsuraceservices.com> containing misspellings of Complainant’s marks constitutes typosquatting. There can be no reason for Respondent to choose these domain names otherwise. Such typosqatting is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii) in respect of the domain names <acelimted.com>, <aceinsuraceservices.com>. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vanguard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED in respect of the domain names the <acelimted.com>, <aceinsuraceservices.com>
and <aceinsuranceandtags.com>.
Accordingly, it is Ordered that the <acelimted.com>, <aceinsuraceservices.com>
and <aceinsuranceandtags.com>
domain names be TRANSFERRED from Respondent to Complainant.
Complainant has failed to establish all three elements required under
the ICANN Policy, in respect of the domain name <a-s-e.net> and the Panel concludes that relief shall be DENIED
in respect of said domain name.
Dated:
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