Churchill Insurance Co. Ltd. and Direct Line Insurance plc v. New Alphabet Ltd.
Claim Number: FA0803001170031
Complainant is Churchill Insurance Co. Ltd. and Direct Line
Insurance plc (“Complainant”),
represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <churchillinsurancclaims.com>, <directlineclaimsite.com>, <directlinevalidation.com> and <directlinevalidations.com>, registered with Wild West Domains, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March
31, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 2008
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@churchillinsurancclaims.com, postmaster@directlineclaimsite.com,
postmater@directlinevalidation.com and postmaster@directlinevalidations.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <churchillinsurancclaims.com> domain name is confusingly similar to Complainant’s CHURCHILL mark and Respondent’s <directlineclaimsite.com>, <directlinevalidation.com> and <directlinevalidations.com> domain names are confusingly similar to Complainant’s DIRECT LINE mark.
2. Respondent does not have any rights or legitimate interests in the <churchillinsurancclaims.com>, <directlineclaimsite.com>, <directlinevalidation.com> and <directlinevalidations.com> domain names.
3. Respondent registered and used the <churchillinsurancclaims.com>, <directlineclaimsite.com>, <directlinevalidation.com> and <directlinevalidations.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The entities filing collectively as Complainant, Churchill
Insurance Co. Ltd. and Direct Line Insurance plc, are
part of The Royal Bank of Scotland Group plc.
Complainant offers insurance products and services under the CHURCHILL
and DIRECTLINE marks. Complainant’s
CHURCHILL mark was first registered with the United Kingdom Intellectual
Property Office (“UKIPO”) on
Respondent registered the disputed domain names on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 Complainant has rights; and
(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.
Complainant has provided extrinsic evidence of its registration of the CHURCHILL and DIRECT LINE marks with the UKIPO. The Panel finds Complainant’s registration of these marks with the UKIPO is sufficient to establish Complainant’s rights in the CHURCHILL and DIRECT LINE marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s disputed domain names each contain
Complainant’s CHURCHILL or DIRECT LINE mark with the addition of generic or
descriptive terms or the addition of misspellings of generic or descriptive
terms. The Panel finds Respondent’s
addition of generic or descriptive terms, or their misspellings do not
sufficiently distinguish the disputed domain names from Complainant’s
marks. Additionally the disputed domain
names each contain the generic top-level domain “.com” which the Panel finds is
irrelevant in determining whether a disputed domain name is similar to a mark
because a top-level domain is a required element of ever domain name. Therefore, the Panel finds Respondent’s
disputed domain names are confusingly similar to Complainant’s marks pursuant
to Policy ¶ 4(a)(i).
See Arthur Guinness Son
& Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain names. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain names. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain names. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s disputed domain names redirect Internet users to the <thereplacementservice.co.uk> domain name where Respondent promotes insurance claims management products and services which directly compete with Complainant’s business. The Panel finds Respondent’s diversionary use of the disputed domain names is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Additionally, Respondent does not appear to be commonly known by the disputed domain names. The WHOIS information lists Respondent as “New Alphabet Ltd.,” and the record does not indicate Complainant has authorized Respondent to use its marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the 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 interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names promote insurance related
products and services which directly compete with Complainant’s business. The Panel finds Respondent’s use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see
also Surface Prot. Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion).
Respondent is using the website resolving from its
confusingly similar disputed domain names to provide Internet users with
competing insurance related products and services. Respondent presumably profits from this
use. Additionally, Respondent’s uses of
Complainant’s marks create a likelihood of confusion regarding Complainant’s
affiliation with the content resolving from the disputed domain names. The Panel finds Respondent is attempting to profit
from the goodwill associated with Complainant’s marks. Therefore, the Panel finds Respondent’s
actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <churchillinsurancclaims.com>, <directlineclaimsite.com>, <directlinevalidation.com> and <directlinevalidations.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY, (Ret.)
Dated: May 5, 2008
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