national arbitration forum

 

DECISION

 

Direct Line Insurance plc v. Low-cost-domain c/o Daniel Stubbs

Claim Number: FA1007001337658

 

PARTIES

Complainant is Direct Line Insurance plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is Low-cost-domain c/o Daniel Stubbs (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <directkline.com>, registered with Enom, 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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.

 

On July 27, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <directkline.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@directkline.com by e-mail.  Also on August 3, 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 August 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" 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:

 

1.      Respondent’s <directkline.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark.

 

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

 

3.      Respondent registered and used the <directkline.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Direct Line Insurance plc, offers a broad range of financial and insurance products and services, including car insurance, home insurance, loans, and mortgages, to customers across the UK and Europe.  Complainant owns numerous trademark registrations for the DIRECT LINE mark with trademark authorities around the world, including the United Kingdom Intellectual Property Office (“UKIPO”), the Canadian Intellectual Property Office (“CIPO”), and the Italian Patent and Trademark Office (“IPTO”):

 

UKIPO

Reg. No. 1,528,733     issued March 5, 1993;

Reg. No. 1,392,349     issued March 18, 1994;

Reg. No. 2,007,078     issued January 5, 1995;

Reg. No. 2,195,444     issued April 23, 1999;

Reg. No. 2,313,954A  issued July 15, 2005;

 

CIPO

Reg. No. 547,664        issued July 4, 2001;

 

IPTO

Reg. No. 1,180,297     issued March 19, 2009; and

Reg. No. 1,213,965     issued September 24, 2009.

 

Respondent, Low-cost-domain c/o Daniel Stubbs, registered the <directkline.com> domain name on April 12, 2010.  The disputed domain name redirects Internet users to Complainant’s website at the <directline.com> domain name, presumably to earn click-through fees for each redirected Internet user.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns numerous trademark registrations for the DIRECT LINE mark with trademark authorities around the world, including the UKIPO, the CIPO, and the IPTO:

 

UKIPO

Reg. No. 1,528,733     issued March 5, 1993;

Reg. No. 1,392,349     issued March 18, 1994;

Reg. No. 2,007,078     issued January 5, 1995;

Reg. No. 2,195,444     issued April 23, 1999;

Reg. No. 2,313,954A  issued July 15, 2005;

 

CIPO

Reg. No. 547,664        issued July 4, 2001;

 

IPTO

Reg. No. 1,180,297     issued March 19, 2009; and

Reg. No. 1,213,965     issued September 24, 2009.

 

The Panel finds that such evidence of registering the mark with trademark authorities around the world is sufficient to establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant alleges that Respondent’s <directkline.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark because the only changes made to the mark are the elimination of the space between the terms of the mark and the addition of the letter “k” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding a single letter to Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark according 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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).  The Panel also finds that the elimination of the space between terms and the addition of the gTLD has no effect on preventing confusing similarity.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s <directkline.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

According to Policy ¶ 4(a)(ii), before the burden to demonstrate rights and legitimate interests transfers to Respondent, Complainant must put forth a prima facie case.  The Panel finds that Complainant has presented a sufficient case in this proceeding, but Respondent has not responded.  As a result of Respondent’s default, the Panel infers that Complainant’s allegations are true as stated and that Respondent does not possess rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  In the interest of fairness, however, the Panel will analyze the evidence in record in light of the Policy ¶ 4(c) factors to make a determination on Respondent’s rights and legitimate interests.

 

Complainant argues that Respondent is not commonly known by the <directkline.com> domain name and is not licensed or authorized to use Complainant’s mark in the disputed domain name.  The WHOIS information for the disputed domain name lists the registrant as “low-cost-domain Daniel Stubbs,” a name with no apparent link to the disputed domain name.  The Panel thus finds that Respondent is not commonly known by the disputed domain name and consequently does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). 

 

Complainant asserts that Respondent is not using the <directkline.com> domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the disputed domain name only redirects Internet users back to Complainant’s actual website at the <directline.com> domain name, presumably to earn affiliate fees.  The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii), especially when Respondent earns click-through commissions for the redirected Internet users.  See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).

 

Complainant contends that Respondent is trying to take advantage of frequent typographical error by registering the <directkline.com> domain name.  Complainant asserts that the disputed domain name merely inserts an additional letter “k,” a letter which is adjacent to the letter “l” on a QWERTY keyboard, into the spelling of Complainant’s mark.  The Panel finds that this behavior is typosquatting and does not grant Respondent rights and legitimate interests in the disputed domain name for the purposes of 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, the 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 the respondent lacked rights and legitimate interests in the 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 finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges that in using the <directkline.com> domain name to redirect Internet users to Complainant’s own website, Respondent presumably earns some type of click-through fee or commission.  Complainant thus argues that Respondent uses Complainant’s mark to capture unknowing Internet users who make a typographical error and then redirect them to Complainant’s website for Respondent’s profit.  The Panel finds that this scheme to appropriate Complainant’s mark and profit from its misuse demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

Complainant asserts that the <directkline.com> domain name redirects Internet users to Complainant’s own website.  While this use of the disputed domain name may not seem to harm Complainant, Respondent’s appropriation of Complainant’s mark in the disputed domain name deprives Complainant of effective control over its mark.  The Panel finds, therefore, that Respondent’s actions indicate bad faith registration and use according to Policy ¶ 4(a)(iii).  See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the  <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").

The Panel previously found that Respondent’s registration of the <directkline.com> domain name constitutes typosquatting.  As such, the Panel also finds that Respondent’s registration and use of the disputed domain name is in bad faith pursuant to Policy           ¶ 4(a)(iii).  See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

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

 

 

Louis E. Condon, Panelist

Dated:  September 8, 2010

 

 

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