Aon Reed Stenhouse Inc., Aon Canada Inc. and Aon Corporation v. Robin Beasse
Claim Number: FA0202000104576
Complainants are Aon Reed Stenhouse, Inc., Aon Canada, Inc. and Aon Corporation, Vancouver, BC, CANADA (“Complainants”) represented by Bradley J. Freedman. Respondent is Robin Beasse, Moose Jaw, SK, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aonreedstenhouse.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 8, 2002; the Forum received a hard copy of the Complaint on February 12, 2002.
On Febraury 11, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <aonreedstenhouse.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 February 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 2002 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 firstname.lastname@example.org by e-mail.
A late Response was received on March 6, 2002.
On March 11, 2002, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants made the following allegations in this proceeding:
Complainants have established rights in the mark that is contained within the disputed domain name. Respondent registered a domain name containing Complainants’ mark in its entirety. Respondent had no right to or interest in the mark or the domain name that contains in its entirety the Complainants’ mark. The domain name is identical to or, alternatively, confusingly similar to Complainants’ well-known mark. Respondent knew about Complainants’ business and mark prior to registering the domain name in issue. Respondent registered and used the disputed domain name in bad faith.
B. Respondent made the following points in his late-filed Response, which the Arbitrator accepted and considered:
Respondent urges that he registered the domain name to use it as a forum for posting complaints against Complainants and other insurance related business entities. Respondent attests that he had no bad faith intent and offered in this proceeding to transfer the domain name in issue to the Complainants for a fair price. The Panel has no information that any such transfer has taken place but a hold has been placed on the domain name. Respondent did not address the issues of confusing similarity or Respondent’s right or interest in the use of Complainants’ mark.
Complainants own the AON REED STENHOUSE trademark in the United States and Canada. Aon Corporation is the registered owner of the AON mark in Canada and the United States and has authorized Aon Canada, Inc. and Aon Reed Stenhouse, Inc. to use the AON trademark in Canada. These entities have used the mark in commerce in the United States since 1987 and in Canada since 1956.
Aon Canada, Inc. is the registered owner of the REED STENHOUSE trademark in Canada and has authorized Aon Reed Stenhouse, Inc. and Aon Canada to use the REED STENHOUSE trademark in Canada since as early as February 1978.
Aon Reed Stenhouse, Inc. is Canada’s oldest insurance brokerage firm, employs more than 1,200 people in officers in 24 Canadian cities and offers a wide variety of insurance brokerage and risk management products and services.
The AON REED STENHOUSE mark is a combination of two registered marks, AON and REED STENHOUSE, which are used in combination with the permission of the registered owners of the marks, Aon Corporation and Aon Canada, Inc. It has come to be associated with distinct business, products and services. Complainants have invested considerable time and funds in developing the goodwill of their business enterprises.
Complainant Aon Corporation is a Chicago based insurance services holding company that owns a family of insurance brokerage, consulting and insurance underwriting companies. Aon Corporation has a worldwide network of more than 550 offices in over 120 countries, and employs more than 40,000 people worldwide. Complainant Aon Reed Stenhouse, Inc. is a leading Canadian insurance brokerage and risk management firm and is Canada’s oldest insurance brokerage business and carries on its sole business in Canada.
Respondent registered the <aonreedstenhouse.com> domain name on August 2, 2001. Respondent used the domain name for a Web site that contains comments that are disparaging and critical of the Complainants.
Complainants sent Respondent a cease and desist letter and sought transfer of the domain name. Respondent refused to do so.
The proof permits the finding that Respondent became disenchanted with Complainants after an attempt to handle an insurance claim with them. Respondent acknowledges that the site “is an informational site containing factual description of events that took place during the handling of a claim with Aon Reed Stenhouse.” Respondent contends the site is “a Public forum in which people can post information about insurance companies.” Respondent offered no proof that anyone but Respondent has ever used the site to post insurance related information.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(2) 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.
Complainants assert rights in the AON REED STENHOUSE mark based on usage in commerce since as early as 1978 for a portion of the mark. Furthermore, Complainant, Aon Canada Inc. is the registered owner of the REED STENHOUSE trademark in Canada.
Complainants further assert that Respondent's <aonreedstenhouse.com> domain name is identical to Complainants’ AON REED STENHOUSE mark, and confusingly similar to Complainant's REED STENHOUSE mark because the domain name registered by Respondent incorporates Complainants' marks in their entirety and adds the generic top-level domain name ".com". The addition of a top-level domain name is irrelevant when considering whether a mark is identical or confusingly similar to another’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”).
Respondent asserts that even though the domain name is similar to Complainants’ mark no confusion is possible because the website is clearly being used as a site of public comment about Complainant and other insurance companies. The Panel finds this position to be an admission by Respondent that the disputed domain name is identical to and confusingly similar to Complainants’ marks.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to and Legitimate Interests
Complainants assert that Respondent has not used the disputed domain name for a bona fide offering of services because the domain name is identical to Complainant's mark and therefore seeks to divert Complainant's customers to Respondent's website. The use of Complainant's trademark to divert Complainant's customers to Respondent's website is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
Complainants further assert that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) and therefore has no rights or legitimate interests in the disputed domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Complainants urge that Respondent's domain name has been used to criticize Complainant and therefore to tarnish Complainants’ goodwill. Furthermore, Complainants contend that even though Respondent has the right to inform the public of its opinion of Complainants it does not have the right to do so using Complainants’ mark. Therefore, Respondent is not using the disputed domain name for a legitimate, noncommercial or fair use. See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of Respondent’s web site may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest “with respect to [a] domain name” which is confusingly similar to another’s trademark); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for “public comment” on the Internet).
Respondent asserted in this proceedings that he is using the disputed domain name for a bona fide purpose of providing a site for public comment about insurance companies and not to benefit from a likelihood of confusion. Respondent asserts that no confusion is possible once an Internet user visits the website and that Complainants and other insurance companies are welcome to post their information at the website. The Panel recognizes that public forum sites are a welcome part of the Internet and have First Amendment protection. See TMP Worldwide Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000) (finding that a criticism forum is an exercise of first amendment rights and, therefore, a legitimate noncommercial use for the domain name). But Respondent seeks to speak about Complainants under the guise of speaking in Complainants’ name and using Complainants’ protected mark. This not only prevents Complainants from exercising such speech in their own name it prevents them from otherwise using their rightful mark in a public posting on the Internet. Respondent is effectuating a fraud on the public under the feigned guise of free speech.
Respondent further notes in this proceeding that he is willing to transfer the domain name to Complainants if they will compensate Respondent for the costs incurred registering the domain name with various search engines. Respondent seeks a “fair price” but does not specify what that price would be. Respondent assumes wrongfully in this instance as well that he had a right to register a domain name using Complainants’ well-known mark. Respondent has shown no such rights to or legitimate interest in the mark in this proceeding.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainants assert that the domain name registered by Respondent, <aonreedstenhouse.com>, is identical to Complainant's mark and that the Internet user will likely believe that an affiliation exists between Respondent and Complainant when there is no such association between them. Registration and use of the <aonreedstenhouse.com> domain name despite its being identical to Complainants’ well-known mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel has considered Respondent’s assertions that he registered and used the disputed domain name in good faith for the bona fide purpose of using the domain name for public comment. Cases recognize a party’s right to criticize another using the Internet. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding that where Respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt Complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith). But Respondent’s conduct does not meet the test imposed there. The Panel finds that it is appropriate to give greater weight to Respondent’s objective manifestations than to his subjective attestations. Respondent admits to dissatisfaction with Complainants after he attempted to handle a claim with them. Respondent knew before he registered the domain name that Complainants had a prior right to use of the mark. Respondent nevertheless registered the domain name using Complainant’s mark. Respondent then sought to sell the domain name for a “fair price” that was not specified to be his mere cost of registration and expenses of development of the website. No evidence was produced that Respondent transferred the domain name. Respondent’s conduct on its face sought to disrupt Complainants’ business by negative commentary. The Panel finds that Respondent acted in bad faith.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having satisfied all three of the policy requirements necessary to obtain the requested relief, it is therefore Ordered that the domain name <aonreedstenhouse.com> be transferred from Respondent to Complainants.
Hon. Carolyn Marks
Dated: March 22, 2002.
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