Direct Line Insurance plc v. Juris Consultants
Claim Number: FA0902001249552
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 <teamdirectline.info>, registered with GoDaddy.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2009.
On February 25, 2009, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <teamdirectline.info> domain name is registered with GoDaddy.com Inc. and that the Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com 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 March 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 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.
A Response was received in electronic copy on March 20, 2009 prior to the Response deadline; however no hard copy was received. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission to the National Arbitration Forum on March 25, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On March 31, 2009 Respondent submitted an Additional Submission to the National Arbitration Forum which was deemed timely and in accordance with the National Arbitration Forum´s Supplemental Rule 7.
On March 27, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, a wholly owned subsidiary of The Royal Bank of Scotland Group plc founded in 1985 offers a broad range of financial and insurance products and services.
Complainant owns a trademark consisting of the phrase “Direct Line” and a telephone handset. Complainant has owned the trademark to “Direct Line” since 1991 with the United Kingdom Intellectual Property Office.
Additionally, Complainant owns the same trademark in
Complainant´s rights in the “Direct Line” mark have been recognized by other National Arbitration Forum panels.
Complainant contends that:
1- The <teamdirectline.info> is identical or confusingly similar to trademarks or service in which it has rights.
2- The Respondent has no rights or legitimate interests in the <teamdirectline.info>.
3- The <teamdirectline.info> was registered and is being used in bad faith.
Complainant asserts that the Domain Name <teamdirectline.info> is confusingly similar because it simply adds the generic term “team” and a generic top level domain extension “info” which is not sufficient to distinguish Respondent from Complainant´s mark. Complainant asserts that Respondent uses the website to redirect users to a website containing various other insurance providers thus increasing the likelihood of confusion.
Complainant argues that Respondent has no legitimate rights in the Domain Name and that any interests of value are derived by the incorporation of Complainant´s “Direct Line” mark and any resulting generated “pay-per-click” fees. In support of its argument, Complainant asserts that Respondent is not authorized to use Complainant´s mark, Respondent did not register the domain name until December of 2008 and that Respondent is not commonly known by the name <teamdirectline.info>.
Complainant states that Respondent´s use of <teamdirectline.info> is a legal presumption of bad faith given that Complainant´s mark is well known around the world and Respondent should have reasonably been aware of this. Complainant asserts that Respondent should have had actual knowledge of Complainant´s mark because the Domain Name contains links to similar services offered by Complainant.
Respondent denies all of Complainant´s claims as being “false and vexatious.” Respondent contends that it bought the Domain Name <teamdirectline.info> but that it never agreed to allow Go Daddy to display links to any competitors of Complainant and thus does not receive any monetary or other benefit. Respondent contends that it is a large manufacturer of mobile filing equipment owning <teamdirectline.info>, <teamdirectline.net>, <teamdirectline.com> and <teamdirectline.mobl>.
C. Additional Submissions
Complainant submitted an additional submission on March 25, 2009 which was considered in the rendering of this decision. The additional submission reinforces Complainant´s above mentioned arguments. Additionally, Complainant asserts that Respondent has failed to meet its burden of proof that is has a legitimate interest with respect to the Domain Name at issue and that “the website to which the Domain Name resolves does not provide any indication of any attempt to use the Domain Name in connection with anything other than promoting and advertising for insurance companies.” Complainant asserts that Respondent is ultimately responsible for the content of its website and that Respondent is not commonly known by the Domain Name but by “Juris Consultants.”
Complainant denies Respondent´s allegations that it “has initiated the present proceeding against Respondent rather than the registrar, GoDaddy.com Inc., on account of Respondent´s ´accessibility, ´ and that the Complaint was confirmed to be ´fictitious.´”
Respondent submitted an additional submission on March 31, 2009 which was considered in the rendering of this decision. Respondent has been doing business on the web for 12 years and has never received any communication mistaking it for Complainant or any other insurance company. Respondent highlights that it owns the rights to <www.teamdirectline.com> which was created in 2000 and that it owns <teamdirectline.info>, <teamdirectline.net> and <teamdirectline.mobl> to protect its own company from any copyright infringement.
Respondent asserts that Complainant never gave Respondent an opportunity to cure the information at <teamdirectline.info>.
Respondent asserts that GoDaddy is responsible for the links on the parked Domain Name at issue. Respondent states that Complainant admitted in a “phone call to their offices that they would have sued GoDaddy but could not because they are too big and instead sued me since the process allowed them to.” Respondent requests that this Tribunal sanction this suit and notify the appropriate Bar Association.
In the drafting of this decision this Tribunal has considered all submissions of Complainant and Respondent, including, Respondent´s deficient submission of March 20, 2009. Respondent´s Response was submitted only in electronic format prior to the Response deadline. A hard copy was not received and thus the submission was not in compliance with ICANN Rule 5. Given the technical nature of this deficiency and the discretion afforded this Panel, this Panel has elected to consider the submission. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
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.
Complainant asserts, in both its Complaint and Additional Submission, its
rights in the DIRECT LINE mark, which Complainant has registered with the
United Kingdom Intellectual Property Office (“UKIPO”) (i.e. Reg. No. 1,392,344
Complainant asserts that the
disputed <teamdirectline.info> Domain Name is confusingly similar to Complainant’s DIRECT LINE mark
despite the deletion of the space in the mark and the additions of the generic
word “team” and the generic top-level domain “.info.” Generally, a domain name is identical or
confusingly similar if it includes Complainant´s mark in its entirety without
any changes that may serve to distinguish the domain name. Also, generic or
descriptive terms added to Complainant´s mark are confusingly similar if they
fail to distinguish the Domain Name from the mark. See Trip Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum
Here, the decision is not very straightforward. Prior panel decisions have found that generic terms can distinguish a Domain Name from Complainant´s mark if Complainant and Respondent are involved in differing businesses. See Spencer Douglas, MGA. v. Bail Bonding, D2004-0261 (WIPO June 1, 2004). Complainant and Respondent are engaged in differing businesses. However, Respondent´s Domain Name does include Complainant´s mark in its entirety with the addition of the term “team.” The additional term is insufficient to distingusih between an insruance provider and a provider of mobile filing systems. Given that Respondent makes no arguments with respect to this section of the Policy, this Panel finds that the Domain Name is confusingly similar to Complainant´s mark.
Pursuant to UDRP ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and/or a legitimate interest in the disputed Domain Name, at which point the burden shifts to Respondent to prove that it does have a legitimate interest. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has alleged that any value that Respondent has from the use of the disputed Domain Name is derived from the incorporation of Complainant´s “DIRECT LINE” mark. Furthermore, Complainant asserts that the disputed Domain Name contains links to Complainant´s competitors, which is not a bona fide offering of goods and services. Given that Complainant´s burden of proof in this respect is light, and that Complainant has submitted evidence of the content of the Domain Name in dispute, this Panel finds that Complainant has met its prima facie case and the burden now shifts to Respondent to prove otherwise.
As an affirmative defense, Respondent must now prove that:
1. it has made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. or
2. Respondent is commonly known by the Domain Name. or
3. Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to mistakenly divert consumers or to tarnish the trademark or service mark at issue.
Most applicable in this instance is the demonstrable
preparations affirmative defense. For this purpose, demonstrable preparations
need not be “actual” use of the Domain Name. A respondent may produce evidence
of preparations to form a company and use the Domain Name for this purpose. See
IKB Deutsche Industriebank AG.
v. Bob Larkin,
D2002-0420 (WIPO July 23, 2002). In this instance, Respondent states that it is
a business that sells mobile filing equipment operating in conjunction with
over 1500 dealers in the
Paragraph 4(a) of the Policy expressly requires that the Complainant must prove each of the three elements by a preponderance of the evidence to obtain an order that a domain name should be cancelled or transferred. Given that Respondent has met its burden of proof, a discussion of this element is not required under the policy. See Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847 (12 Oct 2000) (holding that preponderance of the evidence is the necessary standard for all three elements of a UDRP proceeding).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton Panelist
Dated: April 10, 2009
National Arbitration Forum