Direct Line Insurance plc v. Dealwave
Claim Number: FA0902001247733
Complainant is Direct Line Insurance plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <direcltine.com>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2009.
On February 16, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <direcltine.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2009 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant offers a wide range of financial and insurance products and services, which it markets under the DIRECT LINE mark.
Complainant has used the DIRECT LINE mark continuously in
commerce since at least as early as 1985, and now serves over ten million
customers in the
Complainant registered the DIRECT LINE mark with the United Kingdom Intellectual Property Office (“UKIPO”) on September 6, 1991 (Reg. No. 1,392,344).
Respondent registered the <direcltine.com> domain name on September 8, 2005.
The disputed domain name resolves to a website that displays links to providers of various insurance products and services, some of which are in competition with the business of Complainant.
Respondent’s <direcltine.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark.
Respondent is neither commonly known by, nor licensed by Complainant to register, the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <direcltine.com> domain name.
Respondent’s use of the <direcltine.com> domain name as described disrupts the business of Complainant
Respondent registered and uses the <direcltine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DIRECT LINE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the UKIPO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006):
trademark registrations for the …[contending]… mark
Complainant argues that Respondent’s <direcltine.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains Complainant’s mark in its entirety, with only the letters “t” and “l” transposed, and the generic top-level domain (“gTLD”) “.com” added at the end of the mark. Transposing letters in a mark does not sufficiently distinguish a domain name from that mark for purposes of eliminating confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.
See also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to a complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).
Moreover, the addition of a gTLD is irrelevant for purposes of distinguishing a disputed domain name from a registered mark. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .
We find, therefore, that Respondent’s domain name is confusingly similar to Complainant’s DIRECT LINE mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the <direcltine.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
To the same effect, see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum,
June 4, 2007).
From our review of the record in this proceeding, it is evident that Complainant has established a prima facie case under this head of its Complaint. Because Respondent has failed to respond to the Complaint, we are entitled to conclude that it has no rights or interests in the contested domain name capable of recognition under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a Respondent’s failure to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record for evidence that Respondent has any such rights or interests.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by, nor licensed by Complainant to register, the disputed domain name. Moreover, we observe that Respondent’s WHOIS information identifies it only as “Dealwave.” Therefore, we conclude under Policy ¶ 4(c)(ii) that Respondent lacks rights and legitimate interests in the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
We also note that there is no dispute as to Complainant’s allegation that Respondent is using the <direcltine.com> domain name to display links to third-party websites, some of which are in competition with the business of Complainant. We infer from the circumstances here presented that Respondent is using the disputed domain name to garner click-through fees, and thus conclude that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers, presumably receiving “click-through fees” in the process).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends, and we agree, that Respondent’s use of the <direcltine.com> domain name as described in the Complaint disrupts the business of Complainant, and is thus evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See, for example, Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to its competing website); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors).
In addition, Respondent’s use of the <direcltine.com>
domain name to divert Internet
users to its website in the manner described in the Complaint creates a
likelihood of confusion between Complainant’s mark and the disputed domain
name. Respondent’s use of the disputed
domain name in this fashion while presumably collecting click-through fees is
evidence of bad faith registration and use of the disputed domain name pursuant
to Policy ¶ 4(b)(iv).
USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding
that the registration and use of a domain name confusingly similar to a
complainant’s mark to direct Internet traffic to a commercial “links page” in
order to profit from click-through fees or other revenue sources constitutes
bad faith under Policy ¶ 4(b)(iv)); see also
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <direcltine.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 31, 2009
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