national arbitration forum

 

DECISION

 

Direct Line Insurance plc v. shy zamir

Claim Number: FA0906001268297

 

PARTIES

Complainant is Direct Line Insurance plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA.  Respondent is shy zamir (“Respondent”), Israel. 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zom-direct-line-car-insurance.info>, registered with Go Daddy, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically June 15, 2009; the National Arbitration Forum received a hard copy of the Complaint June 16, 2009.

 

On June 15, 2009, Go Daddy, Inc. confirmed by e-mail to the National Arbitration Forum that the <zom-direct-line-car-insurance.info> domain name is registered with Go Daddy, Inc. and that Respondent is the current registrant of the name.  Go Daddy, Inc. verified that Respondent is bound by the Go Daddy, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 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 postmaster@zom-direct-line-car-insurance.info by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <zom-direct-line-car-insurance.info>, is confusingly similar to Complainant’s DIRECT LINE mark.

 

2.      Respondent has no rights to or legitimate interests in the <zom-direct-line-car-insurance.info> domain name.

 

3.      Respondent registered and used the <zom-direct-line-car-insurance.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Direct Line Insurance plc, is a wholly-owned subsidiary of The Royal Bank of Scotland Group plc and was founded in 1985.  Complainant offers a broad range of financial and insurance products to over ten million customers across Europe.  Its services include car insurance, home insurance, loans, and mortgages.  Complainant holds numerous trademark registrations for its DIRECT LINE mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,392,344 issued September 6, 1991) and other governmental trademark authorities throughout Europe. 

 

Respondent registered the <zom-direct-line-car-insurance.info> domain name September 17, 2008.  Respondent is using the disputed domain name to redirect Internet users to a directory website that displays advertisements and links to various competing providers of insurance services.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant’s trademark registration with the UKIPO for the DIRECT LINE mark sufficiently convey rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i).  Additionally, the Policy does not require Complainant to have registered its DIRECT LINE mark in the country of Respondent’s residence.  See The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). 

 

Complainant contends that its DIRECT LINE mark is the dominant and distinctive element in the disputed domain name and that the <zom-direct-line-car-insurance.info> domain name is confusingly similar to Complainant’s DIRECT LINE mark.  Respondent’s <zom-direct-line-car-insurance.info> domain name fully incorporates Complainant’s DIRECT LINE mark with the addition of the non-descriptive letters “zom,” hyphens between the words, the descriptive phrase “car insurance” and the generic top-level domain “.info.”  The Panel finds that the addition of indiscriminate letters and a descriptive phrase fails to change the confusing similarity between Complainant’s DIRECT LINE mark and Respondent’s <zom-direct-line-car-insurance.info> domain name.  Moreover, the addition of hyphens between the words and generic top-level domains are insignificant under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).  Therefore, the Panel finds that Respondent’s <zom-direct-line-car-insurance.info> domain name is confusingly similar to Complainant’s DIRECT LINE mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests

 

As a preliminary matter, the Panel finds that Complainant, as required by Policy ¶ 4(a)(ii), has made a prima facie case that Respondent lacks rights and legitimate interests in the <zom-direct-line-car-insurance.info> domain name.  Thus, the burden of proof shifts to Respondent, who did not respond to the Complaint.  The Panel may therefore presume that Respondent lacks all rights and legitimate interests; but this Panel examines the record using the applicable Policy ¶ 4(c) elements before making a final determination.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”). 

 

Respondent is using the <zom-direct-line-car-insurance.info> domain name to display various hyperlinks, some of which offer services in direct competition with Complainant.  Respondent presumably receives click-through fees for each redirected Internet user that clicks on one of these links.  Respondent’s attempt to profit by using a confusingly similar variation of Complainant’s mark in the disputed domain name is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  The Panel accordingly finds that Respondent lacks rights and legitimate interests in the <zom-direct-line-car-insurance.info> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the 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 the complainant’s customers and presumably earning “click-through fees” in the process).

 

Furthermore, Complainant contends that Respondent is not commonly known by the <zom-direct-line-car-insurance.info> domain name.  The WHOIS information identifies the registrant as “shy zamir,” and the record contains no other information with respect to this element of the Policy.  Therefore, the Panel finds that Respondent is not commonly known by the <zom-direct-line-car-insurance.info> domain name, and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Some of the links appearing on the website resolving from the <zom-direct-line-car-insurance.info> domain name promote services that compete with Complainant’s insurance business.  If Internet users seeking Complainant’s services are misdirected to click through to the websites of competing companies, Complainant’s business will be negatively affected.  The Panel finds that this diversion and potential for disruption presents evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., 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 in the financial services industry); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of the complainant’s competitors, thereby disrupting the complainant’s business).

 

Respondent’s resolving website also has the potentiality to create a likelihood of confusion as to Complainant’s affiliation with or sponsorship of the disputed domain name.  This confusion has been created for Respondent’s own commercial gain, which stems from profiting from the goodwill associated with Complainant’s insurance business and Complainant’s corresponding marks.  The Panel therefore finds that Respondent registered and is using the <zom-direct-line-car-insurance.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See T-Mobile 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zom-direct-line-car-insurance.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 3, 2009.

 

 

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