Churchill Insurance Co. Ltd. v. Churchhill
Financial Services, Ltd.
Claim Number: FA0906001270466
PARTIES
Complainant is Churchill
Insurance Co. Ltd. (“Complainant”), represented by James A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchhill.com>,
registered with Signature.
PANEL
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.
Carolyn Marks Johnson and The Honourable Neil Anthony Brown QC as Panelists
and Bruce E. O’Connor as Chair.
PROCEDURAL HISTORY
This decision is being rendered in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the
National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental
Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 25, 2009; the National Arbitration Forum received a hard
copy of the Complaint on June 25, 2009.
On June 25, 2009, Signature confirmed by e-mail to the National
Arbitration Forum that the <churchhill.com>
domain name is registered with Signature and that the Respondent is the current
registrant of the name. Signature has
verified that Respondent is bound by the Signature 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 July 1, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 21, 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@churchhill.com by e-mail.
On July 22, 2009, the National Arbitration Forum granted Respondent’s
July 20, 2009 Request for Extension of Time to Respond to Complaint with
Complainant’s Consent, thereby setting a deadline of July 31, 2009 by which
Respondent could file a Response to the Complaint.
A Response was received on August 3, 2009, which was subsequent to the
Response deadline. The National
Arbitration Forum therefore does not consider the Response to be in compliance
with Rule 5.
The National Arbitration Forum received Complainant’s Additional
Submission on August 11, 2009 and determined that it was timely and complete
pursuant to Supplemental Rule 7.
The National Arbitration Forum received Respondent’s Additional
Submission on August 17, 2009 and determined that it was timely and complete
pursuant to Supplemental Rule 7.
On August 18, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Carolyn Marks Johnson and Neil Anthony Brown
as Panelists and Bruce E. O’Connor as Chair.
The National Arbitration Forum received Complainant’s Supplemental
Additional Submission on August 18, 2009 and determined that it was deficient
pursuant to Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the Domain Name at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
trademark is “CHURCHILL” (the “Mark”).
Complainant is an insurance company based in the
Complainant holds numerous trademark
registrations for its “CHURCHILL” mark, including registrations in the United
Kingdom Intellectual Property Office (“UKIPO”) since 1997 and the EU Office for
Harmonization in the Internal Market (“OHIM”) since 1998. Complainant uses
the “CHURCHILL” mark in promoting and providing insurance services and products
throughout the
In
connection with the promotion and operation of its business, Complainant, both
on its own and through its parent entity RBS, owns the domain names <churchill.com> (created September
1994) and <churchill.co.uk> (created August 1996), both of which resolve
to Complainant’s official website.
As
the foregoing indicates, and by virtue of its longstanding role in the
insurance market, its deep commitment to the provision of quality insurance
products and services, and its significant commitment to the marketing and
advertising of its “CHURCHILL” mark, Complainant has built up substantial
goodwill in and rights to this mark.
Furthermore,
Complainant’s rights in its “CHURCHILL” mark have been recognized in numerous
proceedings before the National Arbitration Forum. See, e.g., Churchill Ins.
Co. Ltd. v. Charlton, FA 912281 (Nat. Arb. Forum Mar. 12, 2007) (“As
Complainant holds trademark registrations for the CHURCHILL mark with the UKPO
and OHIM, Complainant has sufficiently demonstrated its rights in the mark for
purposes of Policy ¶ 4(a)(i)”); The Royal Bank of Scot. Group plc, et al v.
Domaincar c/o Perthshire Marketing aka Domaincar, FA 671079 (Nat. Arb.
Forum May 30, 2006) (finding that complainant Churchill demonstrated rights in
the “CHURCHILL” mark by virtue of its registration of the mark with the UKIPO).
The
Domain Name is confusingly similar to Complainant’s Mark because it fully
incorporates Complainant’s Mark, and merely adds an additional letter, “h,”
followed by the top-level domain name extension, “.com,” which does not make
the Domain Name distinct. Complainant’s Mark is the dominant and distinctive
element of the Domain Name, and the Domain Name strongly conveys the impression
of sponsorship by or association with Complainant. Therefore, the Domain Name is confusingly
similar to Complainant’s Mark.
Further,
the intentional misspelling of a mark (by the substitution, addition or
subtraction of a letter) is generally known as “typosquatting,” which is
“designed to catch Internet users who inadvertently make a typographical
error…when trying to type a domain name.”
Typosquatting does not negate the confusingly similar aspects of a
domain name pursuant to Policy ¶ 4(a)(i).
In fact, a previous NAF Panelist reached this conclusion in ordering
transfer of the domain name <churchhill.info>, which is nearly identical
to the present disputed Domain Name <churchhill.com>, under highly
similar circumstances to the present matter in that both matters involve a
typosquatted domain name that resolves to commercial links to third party
websites, to the detriment of Complainant.
In Churchill Ins. Co. Ltd. v. WhoisGuard c/o WhoisGuard Protected, the Panelist found the disputed domain name
<churchhill.info> confusingly similar to Complainant’s mark “CHURCHILL,”
because “the disputed domain name is a common misspelling of the Complainant’s
mark, arrived at by adding the letter “h” to Complainant’s protected mark. Such a practice is typically referred to as
‘typosquatting.’” FA 912323 (Nat. Arb.
Forum Mar. 21, 2007). Accordingly, the
Panelist concluded that the domain name <churchhill.info> was confusingly
similar to the Complainant’s “CHURCHILL” mark.
In the present case, Respondent’s Domain Name also merely adds an “h” to
Complainant’s mark “CHURCHILL.” Like the
<churchhill.info> case, Respondent’s misspelling of Complainant’s Mark
constitutes typosquatting, rendering the Domain Name confusingly similar to
Complainant’s Mark.
Respondent’s
misspelling of Complainant’s Mark within the Domain Name therefore does not
negate the confusing similarity of the Domain Name to Complainant’s Mark under
Policy ¶ 4(a)(i), nor does the addition of the generic top-level domain
<.com> distinguish the Domain Name.
See WorldPay Ltd. v. Jones, FA 1169388 (Nat. Arb. Forum May 8,
2008) (holding that the inclusion of a generic top-level domain name extension
within a disputed domain name is “irrelevant in distinguishing the disputed
domain name from Complainant’s mark because all domain names require a
top-level domain”).
Additionally,
Respondent’s use of the confusingly similar Domain Name to redirect Internet
users to a directory site with links to insurance products and services similar
to Complainant’s products and services further increases the likelihood of
confusion. Respondent is using the Domain Name to
display links to various financial and insurance products and services,
including the same types of products and services offered by Complainant under
its mark.
Respondent
has no right to or legitimate interest in the Domain Name. Complainant has not licensed or otherwise
authorized Respondent to use Complainant’s “CHURCHILL” mark, or any variation
thereof, in the Domain Name or otherwise.
There is no
indication that Respondent is commonly known by the name “churchhill” or the
Domain Name. On June 24, 2009, when
Complainant initially filed the complaint with the NAF and forwarded a copy of
the complaint to the registrant, the WHOIS information for the Domain Name
displayed the registrant’s name as “Churchill Financial Services, Ltd.” with an
address of P.O. Box No 10733,
Moreover,
regardless of this change in the WHOIS information, Complainant has not found
any indication that Respondent is commonly known as the Domain Name or either
of the names “Churchhill” or “Churchill.”
Indeed, an Internet search did not reveal any entity named either
“Churchill Financial Services, Ltd.” or “Churchhill Financial Services Ltd.” to
be located at the address listed in the WHOIS information. Nor did a business name search of either the
Cayman Islands Chamber of Commerce Website or the Internet business directory
website <caymanislandsyp.com> reveal any listings for an entity by the
name of either “Churchill Financial Services Ltd.” or “Churchhill Financial
Services Ltd.” In fact, there is no
evidence showing any association between Respondent and the Domain Name, and
the mere presence of the name “Churchhill Financial Services, Ltd.” within the
WHOIS information is insufficient to support a finding that Respondent is
commonly known by the Domain Name.
Further, Respondent’s use of the Domain Name to misdirect Internet users to a
directory website featuring various commercial links, including links to the
very types of services offered by Complainant under its Mark, does not
constitute a bona fide offering of goods or services or a legitimate noncommercial
or fair use under ICANN Policy. For
example, as of March 12, 2009, Respondent’s website provided links entitled “Go
Compare Car Insurance” and “Cheapest Car Insurance,” in direct correlation to
Complainant’s insurance coverage services.
By clicking these links, Internet users were redirected to further links
for third-party goods and services.
Thus, it
appears that Respondent attempted to capitalize on Complainant’s well-known
mark by attracting Internet users, including Complainant’s current and
prospective customers, to its website and redirecting them to Complainant’s
competitors, presumably in exchange for “click-through” fees.
Respondent’s “typosquatting” use
of the Domain Name constitutes evidence that Respondent lacks rights and
legitimate interests in the Domain Name.
By registering and using the Domain Name, which consists of a
misspelling of Complainant’s Mark, Respondent appears to be targeting Internet
users who are attempting to access Complainant’s site, but mistakenly misspell
Complainant’s Mark by typing an extra “h.”
Respondent is therefore taking advantage of these users’ common mistakes
to redirect them to Respondent’s own website.
The Mark is a registered
trademark and well known in the
Respondent has used Complainant’s Mark to attract to its
websites Internet users interested in Complainant’s goods and services, including Complainant’s current
and prospective customers, and then steer those users to the websites of
Complainant’s competitors. Such use of
the Domain Name threatens to disrupt Complainant’s business by causing
Complainant to suffer loss of customers, business and revenue and is therefore
evidence of bad faith registration and use.
In
support of these contentions, Complainant offers citations of authority, WHOIS
registration pages, copies of pages from its web site, trademark registration
information from UKIPO and OHIM, a page from Respondent’s web site dated March
12, 2009, a Google search, pages from the Cayman Islands Chamber of Commerce
Web site, and pages from caymanisladsyp.com.
B. Respondent
Respondent registered the Disputed Domain
because it incorporates the term "church hill." Respondent selected the domain because it
incorporates a common term. Respondent's
registration of the Disputed Domain had nothing to do with Complainant's trademark. Respondent had no knowledge of Complainant,
its web site, its business name or trademark when it registered the Disputed
Domain. Respondent did not register the
Disputed Domain with the intent to sell to Complainant, to disrupt
Complainant's business, or to confuse consumers seeking to find Complainant’s
web site. Respondent did not register
the Disputed Domain to prevent Complainant from owning a domain name
incorporating its trademark.
Respondent uses the
Disputed Domain to display finance-related sponsored
search results
provided by DomainSponsor.com for which it receives a share of the revenue
earned by DomainSponsor.com from the pay-per-click ads. The links are
autogenerated by DomainSponsor.com and Respondent did not select them. When Respondent learned that some auto
insurance links had appeared on the web site, Respondent contacted Domain
Sponsor to insure those links would no longer appear, and they were removed.
Respondent had the links removed prior to
initiation of these proceedings.
The term "church hill" is subject to
substantial third party use. An advanced Google
search for "church hill," yielded 1.24
million third party results. Examples of third party uses include:
When a trademark incorporates a descriptive
term, as in the present case, minor differences are sufficient to eliminate a
finding of confusing similarity. Here,
the difference is not just of one letter, of two words. The word, Churchill, on
the one hand, and the two-word term "Church Hill" on the other. Both
the word and term are in common use.
Individuals are unlikely to confuse “Church Hill” with
Complainant’s “Churchill,” any more than
they would confuse the hundreds of other Churchills and Church Hills out there
with Complainant. The difference between
the mark and domain is “a difference that matters” and, accordingly, the Panel
should find the Disputed Domain not identical or confusingly similar to
Complainant’s trademark.
Complainant relies on its favorable decision
regarding churchhill.info for the notion that "Churchill" is
confusingly similar to "church hill." However, that decision was a
default
decision and no response was filed. In such
case, Complainant's allegations were simply accepted as true. Churchill Ins. Co. Ltd. v. WhoisGuard c/o
WhoisGuard Protected FA 912323 (Nat. Arb. Forum Mar. 21,2007).
Here, Respondent registered the Domain Name because it
incorporates the descriptive term "church hill," and it has used the
Domain Name to promote finance-related PPC Ads on the web site. Respondent had
no knowledge of Complainant, its alleged trademark or business when it
registered the Disputed Domain. The common nature of "church hill" is
underscored by substantial third party use of the term, evidenced by over 1.24
million third party results on the Internet for this descriptive term.
Complainant's mark is subject to even greater third party use. A Google search
for "Churchill," excluding Churchill.com to avoid references to
Complainant, yielded 166 million third party results. There are also
over 50
Respondent's legitimate interest is bolstered
by its use of the Domain Name for a web site, which has displayed
finance-related PPC advertisements among others.
It is true, as alleged, that a few links have
appeared on Respondent's web site were auto insurance-related links. These were
not intended by Respondent and do not make Respondent's interest illegitimate.
Respondent did not select the links. They were auto-generated by the
DomainSponsor domain parking service.
Moreover, as soon as Respondent learned from
Complainant that these links had appeared, it arranged for the links to no
longer be displayed on the web site. As noted above, the links were removed
prior to the initiation of these proceedings. Respondent does not allege that
it should keep its head in the sand with respect to potential competing
advertisements appearing on its web site. But neither should Complainant. While
Respondent may be held responsible for knowing that auto insurance-related ads
appeared on the web site, it cannot be held responsible for policing its web
site for every trademark existing in the world.
Moreover, the Domain Name is not even identical
or confusingly similar to Complainant's mark, as argued above. Accordingly,
Respondent would not know of Complainant's mark had it searched for Church Hill
trademarks. Complainant was in the best position to note early on that such ads
appeared since it has policed such marks before (i.e. Churchill.info). As soon
as Complainant made Respondent aware of the links, Respondent removed them.
Accordingly, the links should not impact on a conclusion that Respondent has a
legitimate interest in the Disputed Domain.
Complainant raises
the issue that Respondent corrected the spelling of its business name. However,
as noted above, the erroneous spelling of the name was discovered, and
corrected, by Respondent before the Complaint was filed and, thus, was
not done in a manner to have any influence on the proceedings - since the
proceedings had not been initiated by Complainant. There was, thus, no intent to interfere with
or influence, the proceedings.
There is no evidence
Respondent registered the Domain Name in bad faith. Respondent registered
<churchhill.com> because it incorporated a descriptive term. Respondent
had absolutely no knowledge of Complainant, its business, or its trademark when
it registered the Domain Name, and Respondent has never displayed links related
to Complainant's goods and services on its web site. To the contrary, the
evidence demonstrates that since 2004 the links appearing on the web site have
been either generic, or related to moving or real estate.
Absent direct proof
that a common term domain name was registered solely for the purpose of
profiting from Complainant's trademark rights, there can be no finding of bad
faith registration and use.
There is no evidence that Respondent had
knowledge of Complainant's mark when it
registered the Domain Name. Absent such evidence, bad faith certainly
cannot be proven.
There is absolutely no evidence Respondent
targeted Complainant with respect registration and use of the Domain Name.
Accordingly, Respondent has not engaged in bad faith registration or use.
It is true, as alleged in the Complaint, that
some auto-insurance PPC ads have appeared on Respondent's web site in the past.
As noted above, the links were auto-generated by DomainSponsor.com and,
thus, do not constitute evidence that Respondent acted in bad faith. As noted, Respondent arranged to have the
links removed once it was alerted to them by Complainant. This does not
constitute an admission of bad faith, but rather an accommodation to avoid a
dispute. Nevertheless, even if the links
are deemed a bad faith use by Complainant, the Complaint should
nevertheless be denied because there is no evidence of bad faith registration.
Last, but not least, it should be noted that
Complainant has waited eight years since the Domain Name was registered to
bring forth any complaint against Respondent. While laches is not generally
recognized under the Policy, such a long delay in taking action, nevertheless,
questions how confident Complainant has been regarding the success of a domain
name
challenge.
That argument is that it can be inferred from Complainant's long delay
in bringing action that Complainant did not genuinely believe the Disputed
Domain was registered in bad faith.
In
support of these contentions, Respondent offers citations of authority, a
declaration of its manager, a page from Respondent’s web site dated June 4,
2009, a Google search for “church hill,” and search results from the United
State Patent and Trademark Office and the UKIPO for “Churchill” trademarks.
C. Additional Submission – Complainant
Complainant's request for an order transferring the Domain Name is based
upon its well-established rights in the trademark "CHURCHILL." As
stated in more detail in the Complaint, the "CHURCHILL" mark has been
associated with the provision of insurance-related services for the past 20
years in the
Over the years Complainant has established substantial goodwill in and
rights to the "CHURCHILL" mark. Complainant currently provides car,
home, travel, pet, breakdown, van, and motorcycle insurance services.
Complainant's services are provided primarily over the Internet and telephone,
as well as through independent business partners. Complainant promotes the
"CHURCHILL" brand extensively in the
Consumers are not only well aware of Complainant's
"CHURCHILL" mark, but have also responded to Complainant's extensive
marketing and promotional efforts. In 2006, for example, Complainant's motor
insurance premium sales revenue was in excess of £390 million and its home
insurance premium revenue was in excess of £380 million. As a result,
Complainant had a 6.200 share of the
Best Online Home and Contents Insurance Provider: 2004, 2007
Best Home and Contents Insurance Provider: 2005,2008
Best Online Travel Insurance Provider: 2006
Best Online Motor Insurance Provider: 2006, 2007
Best Motor Insurance Provider: 2006, 2008
Best Pet Insurance Provider: 2008
Best Online Pet Insurance Provider: 2009
Moreover, the "CHURCHILL" mark is so strongly associated with
insurance services that 17% of children surveyed in the
Given the strength and fame of Complainant's mark, the
"CHURCHILL" trademark at issue in this matter is not merely a 'common
term,' as asserted by Respondent in its Response. Complainant's mark is instead
a distinctive mark in connection with the provision of insurance related
services, in that it is well known in the
Nor is Complainant's "CHURCHILL" mark a descriptive term, as
Respondent incorrectly argues. As discussed above and in the Complaint,
Complainant's services are focused in the area of insurance. In no way does the
term "CHURCHILL" describe or even suggest Complainant's insurance
services. Yet Respondent attempts to denounce the confusing similarity between
the Domain Name and Complainant's "CHURCHILL" mark by comparing the
present circumstances to UDRP cases in which the marks at issue were
descriptive of their associated goods or services.
The present matter is instead most similar to Churchill Ins. Co. Ltd.
v.
WhoisGuard c/o WhoisGuard Protected, FA 912323 (Nat. Arb. Forum Mar. 21, 2007) and Churchill Ins. Co.
Ltd. v. Charlton, FA 912281 (Nat. Arb. Forum Mar. 12, 2007), involving the
domain names <churchhill.info> and <churchhill-insurance.com>,
respectively. In each case, the addition of the letter "h" to
Complainant's "CHURCHILL" mark caused the Panels to conclude that the
domain names contained a common misspelling of Complainant's mark, which did
not create a distinction, but rather rendered the domain names confusingly similar
to Complainant's mark.
Despite Respondent's contention that it registered the Domain Name
because it "incorporates the descriptive term 'church hill,'" the
facts do not support this explanation. At the heart of the matter is
Respondent's use of the Domain Name. Complainant included with its Complaint
printouts of two versions of Respondent's website as it appeared on or about
March 12, 2009 that reveal Respondent's use of the Domain Name to employ a
website composed almost entirely of links to insurance providers in the
Although Respondent states that using a domain name to operate a
pay-per-click search engine can be a permissible 'business model' under the
Policy, this is not a uniform standard among cases interpreting the UDRP, and
certainly is not so where the domain name is comprised of another party's
trademark. Thus, because the Domain Name consists of a typographical
misspelling of Complainant's "CHURCHILL" mark, Respondent's use of
the Domain Name to operate a website containing pay-per-click ads directly
related to (and in fact including) Complainant's business is evidence that
Respondent was not using the Domain Name in connection with a bona fide
offering of goods or services, much less any other legitimate interest.
Moreover, another version of Respondent's link sites, which highlights
an additional problem with Respondent's use of the Domain Name. Once arriving
at one of Respondent's sites, the content may confuse diverted Internet users
as to its source, such that the website may be perceived as being sponsored by,
affiliated with, or that of Complainant itself. Specifically, this site
displays a prominent header reading "Churchhill.com," beneath which
various headings appear, beginning with "Car Insurance" and
"Home Owners Insurance Quotes." Given the close similarity between
the website's header "Churchhill.com" and the Complainant's Domain
Name <churchill.com>, where it offers its services, including car and
home insurance, Internet users may not immediately realize their error, leading
to the perception that the website is sponsored by or affiliated with
Complainant, or is Complainant's official website. Based on this use of the
Domain Name, it follows that Respondent not only lacked rights or legitimate
interests in the Domain Name, but also intended to capitalize on Complainants'
goodwill and benefit from its well-known mark.
As discussed in detail in the Complaint, Respondent has not presented
any evidence that it is commonly known by the Domain Name. Although the
Response refers to the Respondent's change of the key word in the registrant
name in the WHOIS information from "Churchill" to
"Churchhill," such that it matched the Domain Name, as occurring
before the Complaint was filed, this is simply incorrect. The change appears to
have occurred the day after Complainant initially filed the Complaint.
Regardless, the change was recorded on June 25, 2009, which was after
Respondent's representative acknowledged Complainant's cease and desist letter
on April 9, 2009. Between that date and May 19, 2009, Complainant's
representative repeatedly attempted to discuss the matter with Respondent's
representative but never received more than requests to postpone discussions for
various reasons. Finally, on May 19, 2009, Complainant's representative
informed Respondent's representative that if it would not afford Complainant
the opportunity to discuss the matter, Complainant would need to move forward. It was only after this communication that
Respondent altered its WHOIS information to mirror the spelling of the Domain
Name. Yet although Respondent claims to have registered the Domain Name with
the phrase "Church Hill" in mind, the new WHOIS information refers to
the Respondent as "Churchhill Financial Services, Ltd." rather than
"Church Hill Financial Services Ltd." Further, it appears that the
address provided in connection with the Domain Name registration is comprised
of incorrect information. Pursuant to Rule 2(b), Complainant transmitted a copy
of the Complaint via registered mail to Respondent simultaneously with filing
the Complaint with the NAF, utilizing the postal address contained in the WHOIS
record. On July 31, 2009, however, the Complaint was returned to Complainant,
with an indication from the Airport Post Office,
Nor has Respondent refuted Complainant's evidence of Respondent's
registration and use of the Domain Name in bad faith.
Further to the evidence provided of the fame of Complainant's mark, it
can reasonably be inferred that Respondent was at least aware of Complainant's
"CHURCHILL" mark when it registered the confusingly similar Domain
Name, especially given the prior use of the Domain Name to display links to and
in competition with Complainant's services. Again, Respondent inaccurately
characterizes Complainant's "CHURCHILL" mark as a "common
descriptive term." But here, Complainant's "CHURCHILL" mark does
not describe its insurance offerings, nor is it a common term. Rather,
Complainant's "CHURCHILL" mark is a well-known, distinctive indicator
of the source of its insurance services. Respondent reasonably should have been
aware of Complainant's "CHURCHILL" mark, either actually or constructively.
In fact, Respondent's location in the Cayman Islands increases the likelihood
of actual awareness of Complainant's "CHURCHILL" mark, given that the
Cayman Islands are a "
Given the strength of Complainant's mark, Respondent's use of the Domain
Name to capitalize on Complainant's trademark interest constitutes sufficient
evidence of Respondent's use of the Domain Name in bad faith, in that it
"intentionally attempted to attract, for commercial gain, Internet users
to [its] web site . . . by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship, affiliation, or endorsement
of [its] web site or location or of a product or service on [its] web site or
location." Further, from
Respondent's diversionary use of the Domain Name, it follows that Respondent
registered the Domain Name "primarily for the purpose of disrupting the
business of competitor" and therefore in bad faith.
Despite Respondent's attempt to disclaim responsibility for the use of
insurance-related links on the website to which the Domain Name resolves,
Respondent is ultimately responsible for the content of its website. Respondent
improperly attempts to place responsibility for this content on
"DomainSponsor.com." If the Panel is to follow Respondent's theory,
Respondent could continue to reap the benefits of any insurance-related links
that appear on this infringing website, all the while disclaiming liability for
the links based upon the alleged technical source of the links.
Regardless of whether the advertising/links are for related or unrelated
goods and services, the use of a domain name confusingly similar to
Complainant's mark to attract Internet users to Respondent's website for
Respondent's likely commercial gain is not considered to be 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)(iii).
Respondent essentially argues that its use of insurance-related links on
its website should be overlooked because the links were removed after receiving
Complainant's cease and desist letter. The appropriate time period in which
Respondent's use of the Domain Name should be examined, however, is the period
prior to Respondent's receipt of notice of Complainant's position. Likewise, Respondent's change to the nature
of the links appearing on its website is irrelevant to the present matter,
because it occurred only after receiving notice of the dispute.
Further, Respondent's website, in its present state and as reflected in
the Response, contains a link entitled "Used Cars," which resolves to
a website containing links that appear to vary from time to time, but at
present include a link to "AARP Auto Insurance." Therefore,
Respondent's website continues to contain competitive links to the potential
detriment of Complainant.
Respondent argues that "[w]hile laches is not generally recognized
under the Policy," Complainant's "long delay in taking action, nevertheless,
questions how confident Complainant has been regarding the success of a domain
name challenge." The doctrine of
laches does not apply under the Policy.
Further, based on Complainant’s confidence in asserting its prior
challenges to the domain names <churchhill.info> and
<churchhill-insurance.com> under similar circumstances, Complainant
submits that the time period between the registration of the Domain Name and
the present proceeding has no relevance to Complainant’s level of confidence in
the assertions that the use and registration of the Domain name contravenes the
Policy.
In support of these contentions, Complainant offers citations of
authority, pages from Complainant’s web site, web pages showing awards received
by Complainant, an article relating to the notoriety of Complainant’s bulldog
logo, a printout of all of Complainant’s UK and CTM registrations, two pages
from Respondent’s web site on or about March 12, 2009, a copy of a returned
envelope containing the Complaint, and a page from a web site to which a link
on Respondent’s web site resolves.
D. Additional Submission – Respondent
Respondent will be
brief as most of Complainant's arguments raised in its Additional Submission
are addressed in the Response. Complainant relies almost entirely on isolated
insurance links that appeared on its web site on or about March 12, 2009. As
set forth in the Response, however, there simply is no evidence Respondent
targeted Complainant's trademark. Those links were automated and unintended. As
set forth in the Response, Respondent contacted the domain name parking service
that was displaying the links and directed it to remove the links that
occurred. As noted in the Response, neither the appearance of these unintended
links or their removal constitutes bad faith use.
The appearances of these links were an isolated incident and the
argument that they constitute bad faith is rebutted by several archived web
pages of the Disputed Domain appearing several years earlier. As early as November 28, 2004, Respondent
used a page in which the top links are for "Church Bell" and
"Thinker." While insurance links do appear on the web site, they are
among several other generic categories, such as travel, gifts, shopping,
health, entertainment, home, and computers. There is absolutely no evidence
that Respondent was targeting Complainant. A year later, as of November 25,
2005, the top links were for "personal finance" and
"mortgages," while insurance links were again just one of nine generic
categories. The following year on August 30, 2006, the top links were
"Vacation winter" and "Discount travel." The earliest
available archived web pages for Respondent's web site also show no evidence of
targeting Complainant's mark but, rather, simply the display of generic links.
As noted in the
Response, even if the links appearing in March 2009 were deemed a bad faith use
by Complainant, the Complaint should nevertheless be denied because there is no
evidence of bad faith
registration. Moreover, the
links were all removed prior to
initiation of the Complaint. To the contrary, the earliest available links demonstrate
no connection to Complainant's goods and services, whatsoever. Accordingly,
Complainant's arguments that the isolated insurance links make Respondent's
interest illegitimate and in bad faith must fail.
In support of
these contentions, Respondent offers citations of authority, pages from its web
site dated November 28, 2004, November 25, 2005, August 30, 2006, and September
22, 2001.
E. Supplemental Additional Submission –
Complainant
The Panel, as discussed below, has not
considered this document.
FINDINGS
Admissibility
The certification
required by ¶ 3(b)(xiv) of the Rules is the minimum for the Panel to give any
weight to the factual contentions made by a complainant, and the certification
required by ¶ 5(b)(viii) of the Rules is the minimum for the Panel to give
any weight to the factual contentions made by a respondent. Without certification, a Panel may choose not to consider
any factual statements, even in the case of pro
se parties.
Complainant
has provided the required ¶ 3(b)(xiv) certification, and additional
documents. The Panel finds that the
factual contentions made by Complainant will be given weight as appropriate.
Respondent has provided the
required ¶ 5(b)(viii) certification, and additional documents. The Panel finds that the factual contentions
made by Respondent will be given weight as appropriate.
The National Arbitration Forum has determined
that a hard copy of the Response was not received before the Response
deadline. Rule 5(b) requires each
response to be filed in hard copy, as does Supplemental Rule 5(b).
Rule 10(b) requires the Panel to ensure that
each party is given a fair opportunity to present its case. Rule10 (d) gives the Panel the power to
determine the admissibility of the evidence.
To deny admissibility to the Response on the technical ground of failure
to file a hard copy would be to deny Respondent the opportunity to present its
case. Especially is this so in view of
the fact that Supplemental Rule 7(d) permits the filing of Additional
Submissions (as here) in hard copy or electronic form. See Strum v.
Nordic Net
The National Arbitration Forum has determined
that Complainant’s Supplemental Additional Submission is not provided for under
Supplemental Rule 7(e). The Panel
believes that Complainant has been given ample opportunity to present its case
in its Complainant and Additional Submission.
The Panel declines to admit Complainant’s Supplemental Additional
Submission and has not considered it in its decision.
Trademark
The Panel finds that Complainant has rights
in the Mark. UK Registration No. 2042931 and CTM Registration No. 822916
introduced by Complainant are the bases for this finding. Also persuasive are the previous findings of
other panels, as cited by Complainant above.
The Panel finds that it is not necessary for
Complainant to have registered its CHURCHILL mark in the country of
Respondent’s residence (the
DISCUSSION
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.
Identical
and/or Confusingly Similar
The disputed Domain
Name contains the distinctive portion of Complainant’s CHURCHILL mark with the
only alterations being the addition of the letter “h” and the affixation of the
generic top-level domain “.com.”
Panelists Johnson & O’Connor find that the Domain Name is
confusingly similar to the Mark pursuant to Policy ¶ 4(a)(i).
See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug.
4, 2004) (“The mere addition of a single
letter to the complainant’s mark does not remove the respondent’s domain names
from the realm of confusing similarity in relation to the complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The panels in the cases cited by Complainant
also found that a domain name including “churchhill” was confusingly similar to
the Mark.
While Respondent contends that the Domain Name is comprised of common
and descriptive terms and as such cannot be found to be confusingly similar to
Complainant’s mark, the Panel finds that such a determination is not necessary
under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Further, Respondent’s contention that it
selected the Domain Name to represent the descriptive term “church hill” is
unconvincing to the Panel. The evidence
submitted in support of this contention is its manager’s declaration, which
includes statements of fact that are not substantiated by any details and that
are not corroborated by any other evidence.
Respondent’s own use of the Domain Name does not separate the two words
of the term or otherwise emphasize (e.g., through initial capitalization of
“church” and “hill”) that the term includes two words. Even if the Panel were to accept this
contention, the resultant finding would be irrelevant to the issue of
confusingly similarity, because that issue does not take into account the
intent of the domain name registrant. See
eMedicine.com, Inc. v. Lim, DTV2001-0003 (WIPO Apr. 5, 2001) (finding that
Policy
¶
4(a)(i) is based on comparison of the mark and domain name alone, without any
regard to the manner of actual use or intent to use the disputed domain name); see also Toronto-Dominion Bank v. Karpachev
D2000-1571 (WIPO Jan. 15, 2001) (“In
determining whether a Domain Name is confusingly similar to a trademark, the
intention of the Domain Name registrant is irrelevant. It is the objective
likelihood of confusion that must be assessed.”).
Panelists Johnson
and O’Connor find that the Complainant has met its burden of proof under ¶
4(a)(i) of the Policy.
Panelist Brown
finds that the Complainant has not met its burden of proof under ¶ 4(a)(i) of the Policy, for the following reasons.
The question is whether the Domain Name
<churchhill.com> is confusingly similar to the trademark CHURCHILL. To
answer that question, a straight comparison must be made between the Domain Name
and the trademark, untrammeled by factors such as the intention of the
registrant and the use to which the Domain Name has been put since
registration. Those matters are left to be dealt with under the subsequent
elements in the Policy.
Over the years since the UDRP was
established, various guides have been formulated to assist in the process, but
the test always is and remains whether the domain name is confusingly similar
to the trademark relied on. In particular, it must be remembered that in keeping
with established principles of the interpretation of statutes, words that are
used in a document such as the Policy are not there for decoration, but must be
given some work to do and that it must be shown that on the balance of
probabilities the domain name is in fact confusing as well as similar.
When that
comparison is made, it is apparent that the two expressions in the present case
are similar, but not confusingly similar. They are not confusing because the
objective bystander who is prepared to read the domain name without
embellishing it or reading hidden meanings into it, will see that it consists
of two separate words which, taken either together or separately, have a
different meaning from the meaning of the trademark. The reader cannot be confused
on noting that the Domain Name is ‘churchhill’, not ‘churchill’, evoking as it
does a concept consisting of ‘church’ and ‘hill’, whereas the trademark evokes
a concept consisting solely of the name or entity ‘churchill’.
As the Respondent
has put it in its submission, ‘Individuals are unlikely to confuse “Church
Hill” with Complainant’s “Churchill,” any more than they would confuse the
hundreds of other Churchills and Church Hills out there with Complainant’.
The usage of these differing terms sufficiently
distinguishes the disputed domain name from Complainant’s CHURCHILL mark. See Tire
Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14,
2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware
that domain names for different websites are often quite similar and that small
differences matter.”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack
thereof are context-specific concepts. In the Internet context, consumers are
aware that domain names for different Web sites are quite often similar,
because of the need for language economy, and that very small differences
matter.").
Against this view, Respondent says that such a small spelling
difference of one letter cannot detract from the similarity between two
expressions and that the result is that they are confusing. In other words, the
Complainant argues that the Internet user will read the domain name as one
word, i.e. as ‘churchill’ and will be confused into thinking that it refers to
Complainant.
It is true that there are UDRP decisions where similar views have been
expressed, such as Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i)”).
But in those cases, the same word was to be
found in the domain name as in the trademark and the mere addition of a letter
here or there did nothing but create an artificial word, so odd and ill fitting
that it was still confusingly similar to the trademark on which it was so
obviously based. That was so in all of the cases cited by the Complainant, State Farm Mut. Auto. Ins. Co. v.
Unasi Mgmt. Inc.,
FA 467825 (Nat. Arb. Forum June 8, 2005) (where the domain names were
<sstatefarm.com> and <statefarmn.com> and the trademark was STATE
FARM); Bank of Am. Corp. v. Ling Shun Shing, FA 132447 (Nat. Arb. Forum
Dec. 30, 2002) (where the domain names were <bankofamericana.com>,
<bankofamericca.com> and <bankifamerica.com> and the trademark was
BANK OF AMERICA) and Neiman Marcus Group, Inc. v. Party Night, Inc., FA
114546 (Nat. Arb. Forum July 23, 2002) (where the domain name was
<neimanmacus.com> and the trademark was NEIMAN MARCUS). There are many
similar cases, some of which are cited in Lindsay, International Domain Name Law ICANN and the UDRP, Hart Publishing,
2007, pp 259-261.
In the present case, however, the domain name
consists of two words that stand in their own right and it does no violence to
the language to continue to give them their natural meaning. When that is done,
the two words of the domain name are similar to the trademark because of the
similarities in spelling, but they are not confusing, as they have clearly
different meanings, except to those who are not reading the domain name
correctly.
Complainant,
however, argues that the panel should not read the domain name in this way, as
Respondent has ‘intentionally’ misspelled the trademark and that in any event
‘Respondent’s use of the confusingly similar Domain Name to redirect Internet
users to a directory site with links to insurance products and services similar
to Complainant’s products and services further increases the likelihood of
confusion’. It is now well
established that those considerations are not to be brought into account on
this issue and that the only matters in the equation are the plain terms of the
domain name and the trademark. The panel is therefore left to make a straight
comparison between a domain name, which consists of two common words with
natural meanings, and a trademark consisting of an entirely different
word.
The Complainant also argues that there are
two decided UDRP cases where this issue has already been resolved in its
favour, Churchill
Ins. Co. Ltd. v. WhoisGuard c/o WhoisGuard Protected, FA
912323 (Nat. Arb. Forum Mar. 21, 2007) and Churchill
Ins. Co. Ltd. v. Charlton FA0912281 (Nat. Arb. Forum Mar. 12, 2007). Naturally, panels have regard
to previous decisions on similar facts in the interests of consistency, but
they do not relieve the panelist of the obligation to decide the case before it.
Moreover, each of the cases cited was undefended, no argument was put
against the Complainant’s contentions and the panelists who decided those cases
did not have the advantage of a sustained argument that brought out the real
issues for decision, as has been done in the present case where Respondent’s
submission has presented the correct way in which the domain name should be
interpreted.
Complainant, however, still has an argument that even without evidence
of intention or evidence of the use of the domain name, it is possible that
some users of the Internet will see the domain name, wrongly think that it
refers to Complainant and hence will have been confused.
The problem for Complainant in this argument is that although, of
course, it is possible that some users may be so confused, that result is
improbable. Some users will read the domain name as ‘churchill’, but on the
balance of probabilities the preponderance of them will conclude that the
‘churchill’ so evoked is Sir Winston Churchill, not Complainant. Indeed, the
name and recognition of the former Prime Minister and his ancestors have become
so ingrained in the public psyche of the UK and internationally over hundreds
of years that it is difficult to imagine a single reason why any internet user
would assume that the domain name, even if read wrongly as ‘churchill’,
referred to any person or concept other than Sir Winston Churchill.
Nor is it any reflection on Complainant to note, as the Panel has done
elsewhere, that Complainant’s mark is not famous or known in Respondent’s
country of residence. Indeed, it
appears from the Complaint that in some jurisdictions the insurance services of
Complainant are offered under the name of the parent company, The Royal Bank of
It therefore seems highly artificial to suggest that when the name Churchill or
‘churchill’ is used, or when the reader thinks it is being used or evoked, it
is the Complainant that springs to mind.
Yet, that is what Complainant must prove, for the Policy requires it to
show that the domain name is confusingly similar, specifically to the trademark
relied on by Complainant. But in the present case Complainant has not shown
this element either on the balance of probabilities or at all.
Indeed, it is clear that Complainant in its promotional material on its
website and elsewhere, by its use of the bulldog image and logo so synonymous
with Sir Winston Churchill, has sought to evoke Sir Winston Churchill when the
Churchill name is used. That makes it even more unlikely that the domain name
would be taken by anyone to be referring to Complainant or its trademark.
Once Complainant makes a case in support of
its allegations, the burden of production shifts to Respondent to put forward
some evidence to show that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
¶ 4(c) of the Policy lists three
circumstances in particular, without limitation, that demonstrate rights or
legitimate interest of a domain name registrant to a domain name, for the
purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the
Respondent’s use of, or demonstrable preparations to use the domain name or a
name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business,
or other organization, has been commonly known by the domain name, even if no
trademark or service mark rights have been acquired; or
(iii)
the
Respondent is making a legitimate non‑commercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
Respondent does not
contend that the circumstances of either ¶ 4(c)(ii) or 4(c)(iii) are present in
this case. Respondent even admits that
it has made and is making a commercial use of the Domain Name at its web site.
The issue then revolves
around the circumstances of ¶ 4(c)(i).
The following factual chronology is helpful in the resolution of whether
or not those circumstances have been met:
|
November 11, 1997 |
UK Registration No.
2042931 for the Mark issued to Complainant |
|
June 17, 1999 |
CTM Registration No.
822916 for the Mark issued to Complainant |
|
September 19, 1999 |
Registration of
Complainant’s domain name <churchill.com> |
|
May 5, 2001 |
Registration of Respondent’s
Domain Name <churchhill.com> |
|
September 22, 2001 |
Respondent uses the
Domain Name at a parking service web site displaying numerous commercial
links in the following categories:
small business, web and ecommerce, gambling, gifts, education, computer
services, travel, finance, business services, home, computers, electronics,
sports, marketing, personal finance, business, insurance, auto, shopping,
health |
|
November 28, 2004 |
Respondent uses the
Domain Name at a sponsored web site displaying featured commercial links
(none relating to insurance) and grouped commercial links in the following
categories: travel, entertainment,
gifts, shopping, health, home, finance, computers and insurance |
|
November 26, 2005 |
Ditto |
|
August 30, 2006 |
Ditto (but one of the
featured commercial links relates to insurance) |
|
March 12, 2009 |
Respondent uses the
Domain Name at a sponsored web site displaying only insurance-related
commercial links |
|
April 9, 2009 |
Respondent
acknowledges Complainant’s cease-and-desist letter |
|
June 4, 2009 |
Respondent uses the
Domain Name at a sponsored web site displaying featured links and grouped
links, none relating to insurance |
|
June 26, 2009 |
The National
Arbitration Forum initiates this proceeding |
From the foregoing
table, it is evident that Respondent did not have actual notice of this dispute
until April 9, 2009, which is almost eight years after Respondent registered
and first used the Domain Name. During
the interim period between registration and notice, Respondent’s use of the
Domain Name was primarily in conjunction with displaying featured and grouped
links not related to insurance. Although
one of the grouped links was insurance and although one of the featured links
was insurance, these are only a part of the featured and grouped links
displayed during the interim period.
It is only with Respondent’s March 12, 2009
web site that insurance links rise to the fore.
Here, Respondent clearly was engaged in a use of the Domain Name in
areas of business that were the same as those of Complainant, because, at that
time, The Domain Name resolved to a
website featuring sponsored click-through links that diverted Internet users to
the websites of Complainant’s competitors.
Complainant contends that Respondent is profiting through the generation
of click-through fees. See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website which displayed a series of links, some
of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also
Royal Bank of Scot. Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum
Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was 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)(iii), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites).
While Respondent contends that it does not have control over the
advertisement links that are featured on the disputed domain name, the Panel
finds Respondent to be ultimately responsible for the content contained on the
disputed domain name’s resolving website.
See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27,
2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these
[competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse
and holds Respondent accountable for the content posted to the site that
resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901
(Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is
responsible for the content of any website using the domain name at issue, and
cannot pass that responsibility off to its registrar or domain name service
provider.”).
But, Respondent’s use of the Domain Name in
the manner just described occurred before Respondent received actual
notice of the dispute from Complainant, and
after Respondent made bona fide use of the Domain Name. Further, Respondent promptly removed these
links upon receipt of notice and substituted featured and grouped links not
related to insurance.
Complainant argues that
Respondent had earlier notice of the dispute, either by reason of actual
knowledge of the fame of the Mark, or by reason of the constructive notice
effect of Complainant’s
Regarding actual notice arising from fame of
the Mark, the Panel finds that the Mark is not famous or known in Respondent’s
country of residence. Complainant has demonstrated substantial current
notoriety of the Mark. But, the evidence
of use, advertising, and promotion submitted by Complainant pertains only to
the
Regarding
constructive notice of the Mark, this Panel finds that, for Marks registered
with the UKIPO and OHIM, actual
knowledge is essential under the Policy and constructive notice is
insufficient. See The Way Int’l Inc. v.
Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the
Panel takes the view that there is no place for such a concept under the
Policy. The essence of the complaint is an allegation of bad faith, bad faith
targeted at the complainant. For that bad faith to be present, the
cybersquatter must have actual knowledge of the existence of the complainant,
the trade mark owner.”).
The Panel finds that Respondent has met its
burden of proof under ¶ 4(c)(i) of the Policy.
The Panel finds that
Complainant has not met its burden of proof under ¶ 4(a)(ii) of the Policy.
Panels have held that the issue of bad faith is mooted by a finding of
rights or legitimate interest in the respect of the domain name. See Lockheed Martin Corp. v. Skunkworx Custom
Cycle, D2004-0824 (WIPO Jan. 18,
2005) see also Vanguard Group Inc. v. Investors Fast Track, FA
863257 (Nat. Arb. Forum Jan. 18, 2007).
Although the Panel is not required to make findings on this issue, it
will do so in the interest of completeness.
The circumstances of ¶ 4(b) of the Policy are
illustrative but not exhaustive of the circumstances under which bad faith
registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T] he following circumstances,
in particular but without limitation, if found by the Panel to be present,
shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that
you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of your documented out-of-pocket costs directly related to the domain
name; or
(ii) you have registered the
domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
(iii) you have registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
web site or other on-line location, by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your web
site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. See
Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that respondent registered and used the disputed domain name in bad
faith because mere assertions of bad faith are insufficient for a complainant
to establish Policy ¶ 4(a)(iii)); see
also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb.
Forum Jan. 16, 2003) (finding that general allegations of bad faith without
supporting facts or specific examples do not supply a sufficient basis upon
which the panel may conclude that the respondent acted in bad faith). Lack of rights or legitimate interest under
Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith
under Policy ¶ 4(a)(iii).
Complainant’s contentions as to bad faith are founded on ¶ 4(b)(iii)
and 4 (b)(iv) of the Policy. Complainant
also contends that Respondent has engaged in bad faith registration and use of
the Mark by engaging in typosquatting. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Phil., FA 877979
(Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the
<microssoft.com> domain name as it merely misspelled the complainant’s
MICROSOFT mark).
Each of these contentions requires Complainant to prove that Respondent
had (or should have) known of Complainant and its activities prior to bad faith
registration and use of the Domain Name.
As the Panel has previously discussed, there is no evidence of
Respondent’s knowledge of the Mark (or of Complainant) prior to its
registration of the Domain Name. As the
Panel has previously discussed, there is no evidence of Respondent’s knowledge
of the Mark (or of Complainant) prior to its bona fide use of the Mark.
All that Complainant has demonstrated is one instance of bad faith use
of the Domain Name that was terminated by Respondent upon receiving actual
notice from Complainant. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30,
2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially
registered the disputed domain name in good faith, the panel should deny the
transfer of the disputed domain name to the complainant); see also Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO
Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both
registration and use in bad faith must be proven. Numerous panels have applied this language
strictly, to deny complaints [where the complainant fails to prove
both].”).
There is also a long period between Respondent’s first legitimate use
of the Domain Name (May 5, 2001) and Respondent’s illegitimate use of the
Domain Name (March 12, 2009).
Complainant’s failure to take action persuades the Panel that
Complainant did not view Respondent’s web site as a problem, even though it
included insurance related links, for almost 8 years. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003)
(“Although laches by itself is not a defense to a complaint brought under
the Policy, Complainant's delay in seeking relief is relevant to a
determination of whether Respondent has been able to build up legitimate rights
in the Domain Name in the interim, and whether it is using the Domain name in bad
faith.”); see also Meat & Livestock Comm’n v. Pearce,
D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself
under the Policy, the absence of any complaint over a long period of time in
which domain names are in active use can suggest that such use does not give
rise to a serious problem.”).
The Panel finds that Complainant has failed to meet its burden of proof
under ¶ 4(a)(iii) of the Policy.
DECISION
Complainant not having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Bruce E. O’Connor, Chair
Carolyn Marks Johnson, Panelist
The Honourable Neil Anthony Brown QC,
Panelist
Dated: September 1, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum
[1] See extract from Complaint.
“... The Royal Bank of Scotland Group plc (“RBS”)
offers a wide range of financial products and services, including consumer,
commercial lending and insurance services.”
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page