Churchill Insurance Co. Ltd. v. News and Sport America Inc
Claim Number: FA1002001306533
Complainant is Churchill
Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <churchillnews.com>, registered with Blue Razor Domains, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 5, 2010.
On February 7, 2010, Blue Razor Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <churchillnews.com> domain name is registered with Blue Razor Domains, Inc and that Respondent is the current registrant of the name. Blue Razor Domains, Inc has verified that Respondent is bound by the Blue Razor Domains, 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 February 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2010 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@churchillnews.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <churchillnews.com> domain name is confusingly similar to Complainant’s CHURCHILL mark.
2. Respondent does not have any rights or legitimate interests in the <churchillnews.com> domain name.
3. Respondent registered and used the <churchillnews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Churchill Insurance Co. Ltd., began operation
in 1989 in the
Respondent, News and Sport America Inc, registered the <churchillnews.com> domain name on June 4, 2009. The disputed domain name resolves to a website featuring a hyperlink directory that includes hyperlinks to Complainant’s competitors in the insurance industry.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends it has established rights in the
CHURCHILL mark. Previous panels have
found that trademark registration with a federal trademark authority is
sufficient to establish rights in a mark.
Complainant contends that Respondent’s <churchillnews.com>
domain name is confusingly similar
to Complainant’s CHURCHILL mark. The
disputed domain name incorporates Complainant’s entire mark and merely adds the
generic term “news” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a generic
term and gTLD fail to properly distinguish the disputed domain name from
Complainant’s mark. See AOL
LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that
the respondent failed to differentiate the <aimprofiles.com> domain name
from the complainant’s AIM mark by merely adding the term “profiles”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr.
10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com”
does not serve to adequately distinguish the Domain Name from the mark.”). Thus,
the Panel concludes that Respondent’s <churchillnews.com> domain
name is confusingly similar to Complainant’s CHURCHIL mark pursuant to Policy ¶
4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the <churchillnews.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <churchillnews.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by
the <churchillnews.com>
domain name. Complainant argues that
Respondent has not presented any evidence that would support a finding that
Respondent is commonly known by the domain name. The Panel finds no evidence in the record
that would provide a basis for finding that Respondent is commonly known by the
disputed domain name. The WHOIS
information identifies Respondent as “News and Sports America Inc.,” which is
not similar to the disputed domain name.
Complainant asserts that it has not authorized or licensed Respondent to
use or register the <churchillnews.com> domain name. Therefore, the Panel finds that Respondent is
not commonly known by the <churchillnews.com> domain name under
Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is 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 was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Respondent uses the <churchillnews.com>
domain name to resolve to a directory website containing hyperlinks to
Complainant’s competitors in the insurance business. Respondent likely receives click-through fees
from these links. The Panel finds that
Respondent’s use of a confusingly similar disputed domain name to operate a
website featuring links to Complainant’s competitors is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <churchillnews.com> domain name resolves to a website featuring
a directory of hyperlinks, some of which resolve to Complainant’s competitors
in the insurance industry. Complainant
alleges that Respondent’s use of the disputed domain name disrupts its business
because Internet users intending to purchase insurance products and services
from Complainant may purchase the same products and services from a competitor
as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <churchillnews.com>
domain name does disrupt Complainant’s insurance business, which constitutes
bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors); see
also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July
24, 2006) (finding that the respondent engaged in bad faith registration and
use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to
operate a commercial search engine with links to the products of the
complainant and to complainant’s competitors, as well as by diverting Internet
users to several other domain names).
The Panel infers
that Respondent receives click-through fees from the aforementioned
hyperlinks. Internet users searching for
Complainant may find Respondent’s website instead because of Respondent’s use
of a confusingly similar disputed domain name.
Internet users may then become confused as to Complainant’s sponsorship
of and affiliation with the disputed domain name, resolving website, and
featured hyperlinks. Respondent attempts
to profit from this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also Univ. of Houston
Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“Respondent is using the disputed domain name to operate a website which
features links to competing and non-competing commercial websites from which
Respondent presumably receives referral fees.
Such use for Respondent’s own commercial gain is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <churchillnews.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 19, 2010
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