national arbitration forum

 

DECISION

 

Direct Line Insurance plc v. Juga Fish

Claim Number: FA1003001311750

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lineadireca.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2010.

 

On March 7, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lineadireca.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On March 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lineadireca.com.  Also on March 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On April 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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:

 

Complainant offers financial and insurance products and services throughout Europe under the LINEA DIRECTA trademark. 

 

Complainant holds registrations of the LINEA DIRECTA trademark with various governmental authorities around the world, including the Oficina Española de Patentes y Marcas (the Spanish Patent and Trademark Office) (Reg. No. 1,190,911, issued January 20, 1989).

 

Complainant has not licensed or otherwise authorized Respondent to use the LINEA DIRECTA mark. 

 

Respondent registered the <lineadireca.com> domain name on March 7, 2006. 

 

As of January 15, 2009, the disputed domain name resolved to a website that imitates Complainant’s website. 

 

As of February 10, 2010, the disputed domain name redirects Internet users to Complainant’s website.

 

Respondent receives a referral fee for this redirection of Internet users.

 

Respondent’s <lineadireca.com> domain name is confusingly similar to Complainant’s LINEA DIRECTA mark.

 

Respondent does not have any rights to or legitimate interests in the <lineadireca.com> domain name.

 

Respondent registered and uses the <lineadireca.com> domain name in bad faith.

 

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

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence of the registration of the LINEA DIRECTA trademark with the appropriate governmental trademark authorities, including the Oficina Española de Patentes y Marcas (Reg. No. 1,190,911 issued January 20, 1989 ).  This evidence is sufficient to establish Complainant’s rights in the LINEA DIRECTA mark under Policy ¶ 4(a)(i).  See Choice Hotels Int’l, Inc. v. Domain Admin., FA 791619 (Nat. Arb. Forum Oct. 18, 2006) (finding that a complainant established rights in the CLARION HOTEL mark through registration of the mark with the Spanish trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate a mark in some jurisdiction).

 

The <lineadireca.com> domain name contains a misspelling of Complainant’s LINEA DIRECTA mark, deleting the letter “t,” and merely adds the generic top-level domain (“gTLD”) “.com.”  These alterations to Complainant’s mark in forming the disputed domain name do not sufficiently distinguish the domain name from Complainant’s mark to satisfy the strictures of the Policy.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” in forming the disputed domain name);  see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

Therefore, the Panel finds that the <lineadireca.com> domain name is confusingly similar to Complainant’s LINEA DIRECTA mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name.  Once Complainant makes this showing, the burden shifts to Respondent, who must establish by positive proof that it has rights to or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:

 

complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.

 

Complainant has sufficiently made a prima facie showing under Policy ¶ 4(a)(ii).  The burden therefore shifts to Respondent, from whom no response to the Complaint has been received.  We are therefore free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.   See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has any rights to or legitimate interests in the contested domain name which are cognizable under the Policy.

 

We begin by observing that the WHOIS information for the <lineadireca.com> domain name lists “Juga Fish” as the registrant, which does not resemble the disputed domain name.  Moreover, Complainant asserts, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use the LINEA DIRECTA mark.  Therefore, we conclude that Respondent is not commonly known by the domain name <lineadireca.com> so as to have established rights or interests in the contested domain under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by a disputed domain name);  see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).

 

We also note that there is no dispute as to Complainant’s allegation to the effect that, prior to January 15, 2009, the disputed domain name resolved to a website that imitated Complainant’s website.  It is evident therefore that Respondent has attempted to pass itself off as Complainant, which does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use Policy ¶ 4(c)(iii).  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (a panel finding that a respondent’s attempt to pass itself of as a complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a contested domain name pursuant to Policy ¶ 4(c)(iii) where that respondent used the domain name to present users with a website that was nearly identical to that complainant’s website); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):

 

It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”

 

There is likewise no dispute as to Complainant’s assertion that, as of February 10, 2010, the disputed domain name redirects Internet users to Complainant’s website.  Complainant further asserts, without objection from Respondent, that Respondent receives a referral fee for this redirection of Internet users.  Therefore, we conclude that Respondent’s use of the <lineadireca.com> domain name is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

See also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to form a domain name that redirects Internet users to that respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii)).

 

Finally under this head of the Complaint, we are compelled to the conclusion that Respondent is engaged in typo-squatting because, in forming the contested domain name, Respondent is taking advantage of a common misspelling of Complainant’s LINEA DIRECTA mark.  Typo-squatting is further evidence that Respondent lacks rights to and legitimate interests in the <lineadireca.com> domain name under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had:

 

engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

See also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

The Panel therefore finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

The evidence of record indicates that Respondent has attempted to use the disputed domain name to pass itself off as Complainant.  This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  In addition, Respondent has presumably used the disputed domain to collect affiliate fees, which also constitutes evidence of bad faith registration and use of the subject domain under Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):

 

Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.

 

See also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith where a respondent not only registered a complainant’s TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process).

 

In addition, Respondent’s use of the technique of typo-squatting is likewise evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typosquatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):

 

By engaging in typosquatting, Respondent has registered and used the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <lineadireca.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 22, 2010

 

 

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