National Arbitration Forum

 

DECISION

 

Churchill Insurance Co. Ltd. v. Mark Midland

Claim Number: FA1009001345740

 

 

PARTIES

Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is Mark Midland (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The Domain Name at issue is <churchilltips.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he 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.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2010.

 

On Septempber 13, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <churchilltips.com> Domain Name is registered with GoDaddy.com, Inc. and that the 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 September 15, 2010, the Forum served the Complaint and all Exhibits, including a Written Notice of the Complaint, setting a deadline of October 5, 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@churchilltips.com  by e-mail.  Also on September 15, 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.

 

A timely Response was received and determined to be complete on September 17, 2010.

 

Complainant’s Additional Submission was received on September 22, 2010 in compliance with Supplemental Rule 7. 

 

On October 1, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana Esq. as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Churchill Insurance Co. Ltd. submitted the complaint on September 9, 2010.

 

The Complainant makes the following assertions:

 

1.      Respondent’s <churchilltips.com> Domain Name is confusingly similar to Complainant’s CHURCHILL trademark because it fully incorporates Complainant’s mark and merely adds the generic term “tips” followed by the top level Domain Name extension “.com”, neither of which makes the Domain Name distinct.

 

2.      Respondent has no rights or legitimate interest in respect of the Domain Name. Any value that the Domain Name may have is derived solely by the incorporation of the Complainant’s CHURCHILL trademark.

 

Under the ICANN Policy, when the Complainant has made a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed Domain Name, the burden shifts to the Respondent to prove that it has rights in the name.

 

Respondent cannot demonstrate any rights or legitimate interests in the disputed Domain Name.

 

3.      Respondent’s use of a confusingly similar Domain Name to misdirect Internet users to a website displaying various commercial links, including links to the very types of services offered by Complainant, is not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name.

 

4.      There is no indication that the Respondent is commonly known by the Domain Name. The Respondent registered the Domain Name under the name “Mark Midland”, which has no apparent relation to the Domain Name.

 

5.      The Domain Name was registered and is being used in bad faith. Complainant’s CHURCHILL trademark is a registered trademark and well known in the United Kingdom and Europe.

 

The fact that Respondent is using the Domain Name to redirect Internet users to a website containing links to Complainant’s competitors shows that Respondent had knowledge of Complainant’s trademark.

 

Respondent has used Complainant’s trademark to attract to its website, Internet users interested in Complainant’s goods and services, including Complainant’s current and prospective customers.

 

B.     Respondent makes the following responses:

 

1.         The domain <churchilltips.com> was registered by Mark Midland, on behalf of Immerse!, LLC, a company devoted to the business of websites specializing in horse racing. Its more developed website is <hoseracingnation.com>. The company also operates <racedaytips.com>.

 

2.         A major part of the sport of horse racing is the area of tips on which horses will run well each day at the track.

 

3.         Horse racing tips are often identified by the racetracks for which players seek tips. In consequence, Respondent registered also the following domains: <churchilltips.com> , <saratogatips.com>, <belmonttips.com>, <keenelandtips.com>, <delmartips.com>, <racedaytips.com> and <longshottips.com>.

 

4.         A Google search for “Churchill Tips” shows that 6 of the top 20 results refer to horse racing tips for Churchill Downs racetrack. This shows that horse tips for Churchill Downs is a viable business and that it has the biggest share of the percentage of search results for the Churchill Tips search terms.

 

5.         Generic name argument does not hold up to scrutiny. There are dozens of examples of companies and domains in existence that are comprised of “Churchill” + suffix.com.

 

Churchill is a very common noun referring to cities, famous people and one of the most famous racetracks in the world. In addition, “tips” is not a generic word, yet rather a core part of the horse racing business.

 

6.         The business is in good faith and is in development. Not all of the “tips” websites owned by the Respondent have been in operation to date. Each of the websites was purchased since May 2010 and has been in its ownership for only 4 months. In any case, Respondent intends to deploy content on the “tips” sites in the near future.

 

7.         Respondent is planning to move forward with its plans for the <churchilltips.com> domain as soon as the present dispute is over.

 

C.     Additional Submissions

 

On September 22, 2010, Complainant filed an additional submission in reply to Respondent’s Response.

 

The Complainant makes the following assertions:

 

1.      Complainant attempted to reach Respondent prior to filing the Complaint and Respondent nevertheless did not make any effort to remove or alter the content of the website to which the Domain Name resolves.

 

2.      Respondent’s claims that the Domain Name is not confusingly similar to Complainant’s CHURCHILL mark is contradicted by the fact that Respondent is using the Domain Name to provide links to competing insurance products and services competitive to those offered by Complainant under its CHURCHILL mark.

 

3.      Respondent’s supposed claim that it was intending to develop a website with different content does not establish a legitimate interest in the Domain Name when Respondent is in fact using the Domain Name to resolve to a pay-per click link page that has been found by numerous panels not to be a legitimate interest.

 

4.      Respondent cannot avoid responsibility for the content on the website by attempting to blame the Registrar.

 

FINDINGS

 

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Likewise, paragraph 10 (d) of  “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

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 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;

 

(3)               The Domain Name has been registered and is being used in bad faith.

 

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 first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant alleges that it holds numerous trademark registrations before the United Kingdom Intellectual Property Office –UKIPO- since 1997 and before the Office for Harmonization in the Internal Market –OHIM- since 1998. Complainant asserts that it uses its trademark in promoting and providing insurance services and products throughout the United Kingdom. Additionally, Complainant owns the Domain Names <churchill.com> since 1994 and <churchill.co.uk> since 1996.

 

Complainant states that the disputed Domain Name is confusingly similar to the referenced trademark pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of generic or merely descriptive terms..

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

In fact, Complainant has provided evidence of a registration for the CHURCHILL mark, as shown in Exhibit C of Complaint. The prior, gives Complainant legitimate right to file the complaint under examination.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive^[1]. Complainant registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Respondent has the burden of refuting this assumption^[2].

 

Before establishing whether or not the disputed Domain Name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., .com, .biz, .edu, .org cannot be taken into consideration when studying if the registered Domain Name is confusingly similar to the registered trademark.

 

As it has been repeatedly accepted by UDRP Panels the existence of the “. com” generic top-level domain (gTLD), in the disputed Domain Name is not a factor for purposes of determining that a disputed Domain Name is not identical or confusingly similar to the mark in which the Complainant asserts rights.

 

“ In the strictest sense, the Domain Name lumena.com is not identical to the trademark Lumena. The former includes a top level domain “.com” while the word Lumena stands alone in the latter. However, where the addition of it top-level domain appeared the Domain Name was the one that most closely described that nature of trademark (i.e.; “com” representing a commercial enterprise). The virtual identically seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy” ^[3]

 

Respondent, however, argues that even if the Complainant has trademark registrations for the CHURCHILL trademark, CHURCHILL is a very common noun referring to cities, famous people and one of the most famous racetracks in the world. Respondent also states that there are dozens of examples of Domain Names that use the CHURCHILL expression. Respondent claims that a Google search for “Churchill Tips”, 6 of the top 20 results, or 30% of the results, featured a search result that refers to a horse racing tip for Churchill Downs Race Track. Exhibit A filed with the Response, reproduces the mentioned Google search.

 

The Panel finds that even if it is true that some of the results of the above mentioned Google search are related to horse racing, it is also true that the top of the results list is Complainant’s web site <churchill.com> and refers to Complainant’s activity, which may lead users to confusion.

 

At this point, the Panel wishes to clarify that according to Policy, what is important is the existence of a trademark registration and that the disputed domain is identical or confusingly similar to the registered trademark. In fact, Policy 4(a)(i) considers only whether Complainant has rights in the mark and whether the disputed Domain Name is identical or confusingly similar to Complainant’s mark.

 

In the present case, the disputed domain reproduces entirely Complainant’s trademark CHURCHILL and adds the generic term “tips”. Respondent finds that the use of the generic term “tips” in the registered disputed domain <churchilltips.com> cannot be found to be confusingly similar to Complainant’s trademark.

 

This Panel finds that the fact that the disputed domain includes a generic term after the Complainant’s trademark, does not impeach that the disputed domain may be considered as confusingly similar to the registered trademark. Several Panels have stated that: “Adding a word to Complainant’s trademark should not preclude a finding of confusing similarity and thus, infringement.”[4]

 

UDRP panels have recognized that reproducing a trademark in its whole is sufficient to establish that a Domain Name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the Domain Name does not affect a finding that the Domain Name is identical or confusingly similar to the Complainant's registered trademark.

 

It is clear for this Panel that the fact that the disputed domain adds the generic term “tips” to Complainant’s trademark, does not prevent the Domain Name <churchilltips.com>  from being confusingly similar to the CHURCHILL trademark.

 

The entirety of the mark CHURCHILL is included in the Respondent´s Domain Name <churchilltips.com>. The word “tips” added to the word “Churchill” does not preclude the entire expression to be graphically, orthographically and phonetically similar with the registered trademark CHURCHILL.

 

The Panel concludes that the Domain Name <churchilltips.com> is confusingly similar to Complainant’s CHURCHILL trademark pursuant to Policy 4(a)(i). The evidence establishes Complainant’s rights in the CHURCHILL trademark for purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the Domain Name:

(i) before any notice to you of the dispute, your 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 or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii).

 

Complainant claims that the Respondent has no rights or legitimate interests over the domain in dispute. At the same time, Complainant proved that he has rights and legitimate interest in the <churchilltips.com> Domain Name.

 

Respondent claims that he purchased the <churchilltips.com> Domain Name, in June 2010 with the purpose of integrated the disputed domain into its business of websites specialized in horse racing.

 

Respondent claims being the owner of the Domain Name <horseracingnation.com>. This Panel has conducted an ex officio inspection into the Godaddy.com website and found that the mentioned domain was in fact, registered by Respondent. This Panel also performed an inspection into the <horseracingnation.com> Domain Name, finding that the same is devoted to the sport of horse racing and includes related information.

 

Respondent also states that a mayor part of the horse racing sport is the area of tips. However, there is no mention of the tips area in the Domain Name <horseracingnation.com>. In fact, by searching for the “tips” expression into the search menu of the mentioned domain, the only results that arise are horse names, as Dances for Tips, A Little Tipsy and Tipsy Girl among others.

 

It is asserted by the Respondent, that the <churchilltips.com> Domain Name is a part of a viable business as a whole and that he also owns other Domain Names that are related to its activity and in particular, to the tips area. Respondent refers to the following Domain Names:

 

<saratogatips.com>

<belmonttips.com>

<keenelandtips.com>

<delmartips.com>

<racedaytips.com>

<longshottips.com>

 

The Panel has also verified ownership of the above mentioned Domain Names, finding that they are in fact, owned by the Respondent.

 

As for the use of the mentioned Domain Names, this Panel found that the Domain Name <saratogatips.com> is not in use and resolves to a Godaddy web page in which sponsored lists are included. The links that are provided through the <saratogatips.com> domain, refer to various activities, including horse racing. These are the links that are displayed in the mentioned page:

 

SARATOGA NY PRIME LAND

HORSE FOR SALE. FREE ADDS

GO RACING. STAY IN A PUB

¿VIVIR EN AUSTRALIA?

BARCELONA HORSES. PRE

GAVIN DOBSON

CHARLIE LANGTON

VIAJAR A NUEVA YORK

HORSE JUMPLING SUPPLIES

 

The <belmonttips.com> Domain Name is not in use either and also resolves to a Godaddy web page, displaying sponsored listings referring to horse racing activities. These are the links that are displayed in the mentioned page:

 

HORSE FOR SALE. FREE ADS

GO RACING. STAY IN A PUB

GAVIN DOBSON

CHARLIE LANGTON.

SEDUCE MUJER EN 7 MINUTOS

LINCOLN & MILLER WELDERS

PLAY. ITS NOW OR NEVER

 

The same happens with the <keenelandtips.com> and <longshottips.com> Domain Names.

 

As for the <delmartips.com> and <racedaytips.com> Domain Names, the same are in use and display information about horse racing, making express reference to the tips area.

 

The Disputed Domain Name <churchilltips.com> is not in use. The Respondent has not provided any evidence that may lead this Panel to believe that he is using or preparing to start using the disputed domain in connection to a bona fide offering of goods or services. He failed to prove also that he is commonly known by the Domain Name and that he is making a non commercial or fair use of the Disputed Domain.

 

In fact, the disputed Domain Name, currently features links to Complainant’s competitors which cannot be considered as a bona fide offering of goods and services. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name <churchilltips.com> and thus, Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.

 

Complainant claims that the <churchilltips.com> resolves to a Godaddy webpage in which links to its competitors have been placed. The Panel finds this to be proven though Exhibit E filed with the Complaint, in which the sponsored are included. The following are the sponsored links included in  <churchilltips.com> :

 

CAR INSURANCE QUOTES

CHEAPEST CAR INSURANCE

CAR INSURANCE QUOTE

HOUSE INSURANCE QUOTE

DISCOUNT CAR INSURANCE

CONFUSED CAR INSURANCE

LV = CAR INSURANCE

 

None of the sponsored links, refer to the horse racing business, making the use of the Disputed Domain, different from that of the other domains referred to herein.

 

It is evident that all the links displayed refer to the Complainant’s business and guide users to Complainant’s competitors.

 

Several Panels have stated that the use of the disputed domain name for a website that is used to market products of Complainant’s competitors constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith.[5]

 

Additionally, there is evidence that the Complainant attempted to reach Respondent prior to filling the Complaint. Exhibit A filed with Complainant’s Additional Submission, shows that Complainant effectively sent a letter to Respondent, requesting him to cease in the use of the disputed Domain Name.

 

Evidence shows that Respondent refused the letter –which was returned undeliverable- that was sent to him by the Complainant. Evidence also shows that Complainant made several attempts to reach Respondent by e-mail, which were also unsuccessful. Failure to respond to a demand letter has been considered by several Panels as an indication of Respondent’s bad faith[6].

 

It is also clear to this Panel that Respondent had knowledge about Claimant’s trademark and activity. Otherwise, it is hard to understand why all the links provided though the Disputed Domain, are related to Complainant’s activity.

 

Respondent claims that the registration of the disputed Domain Name, pretended to identify the mentioned Domain with some racetracks and refers to the Churchill Downs Race Track. If this was really the intention of the registration of the <churchilltips.com> Domain Name, this Panel wonders why did the Respondent registered this Domain Name instead of registering <churchilldownstips.com>, which is not only available, but also in connection with Respondent’s arguments.

 

In the present case, Respondent may also be obtaining benefits from the disputed Domain Name. In fact, depending on traffic, the sponsored lists can be a source of revenues. Sponsored lists are defined thanks to the criteria that are provided by the owner of the Domain Name. The owner of a parked Domain Name that wants to insert sponsored lists, should define the criteria over which the links to be sponsored should be selected, by inserting them through the settings definitions of a Google account.

 

It is considered that the registration and use of a Domain Name confusingly similar to a Complainant’s mark to direct Internet traffic to a commercial links page in order to profit from click-through fees, constitutes bad faith under Policy 4(b)(iv)[7].

 

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <churchilltips.com> domain name.

 

DECISION

 

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

 

Accordingly, it is Ordered that the <churchilltips.com> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Fernando Triana

Panelist

Dated: October 14, 2010

 

 

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