Churchill Insurance Co. Ltd v. Coolidge road productions
Claim Number: FA1009001348353
Complainant is Churchill Insurance Co. Ltd. ("Complainant"), represented by James A. Thomas, North Carolina, USA. Respondent is Coolidge road productions ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchillcarinsurance.org>, registered with GoDaddy.com, Inc. (R91-LROR).
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2010; the National Arbitration Forum received payment on September 24, 2010.
On September 24, 2010, GoDaddy.com, Inc. (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <churchillcarinsurance.org> domain name is registered with GoDaddy.com, Inc. (R91-LROR) and that Respondent is the current registrant of the names. GoDaddy.com, Inc. (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, Inc. (R91-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@churchillcarinsurance.org. Also on September 24, 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 October 15, 2010.
On October 22, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The trademark is “CHURCHILL” (the “Mark”). Complainant is an insurance company based in the United Kingdom and has been in business since 1989. Complainant provides various insurance services, including, home insurance, car insurance, travel insurance, pet insurance and motorcycle insurance throughout the United Kingdom. Complainant is part of The Royal Bank of Scotland Group plc (“RBS”), one of the leading financial services providers in the world. With offices in numerous countries on six continents, and more than 140,000 employees, RBS offers a wide range of financial products and services, including consumer, commercial lending and insurance services.
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 United Kingdom.
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 the descriptive term “car insurance”, a regular activity of insurance companies and one in which the Complainant is known to engage, followed by the top-level domain name extension, “.org,” neither of which makes 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.
Additionally, Respondent’s use of the confusingly similar Domain Name to redirect Internet users to a website displaying various commercial links, including links to the very types of services offered by Complainant, 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 rights 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. It is also clear from the available evidence that Respondent is not commonly known as the Domain Name or as “Churchill.”
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 non-commercial or fair use under the ICANN Policy. Moreover, 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.
The Mark is a registered trademark and well known in the United Kingdom and Europe. Based on the fame of the Mark, the fact that Respondent chose a Domain Name which fully incorporates the Mark and the fact that Respondent is using the Domain Name to redirect Internet users to a web site containing links to Complainant’s competitors, it is clear that Respondent had knowledge of the Mark and is attempting to take advantage of Complainant’s goodwill. Since Respondent had actual and/or constructive knowledge of Complainant’s Mark, Respondent’s registration and continued holding of the Domain Name was and is in bad faith.
Respondent has used Complainant’s Mark to attract to its website 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.
Moreover, the facts of this case bring the matter within paragraph 4(b) (iv) of the Policy, as they show the use of a domain name intentionally to attract Internet users to a registrant’s website, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain, thus demonstration bad faith registration and use.
B. Respondent
On the issue of whether the disputed domain name is identical or confusingly similar to Complainant’s trademark, Respondent submits that it is unclear as to how a generic, geo-domain can be trademarked. The domain name <churchillcarinsurance.org> is comprised of a location and a generic term or phrase. If a company indeed calls itself by this title, it would seem more of an unfortunate coincidence than an infringement on a trademark. There are Churchills all over the world. There is a Churchill in Australia, one in Manitoba. There is a county in Nevada called Churchill and a borough of Pennsylvania called Churchill. This is just a short list of the Churchills that exist on the globe. It would seem anyone would be allowed to purchase a domain with Churchill in it, as they would a domain with Springfield or Des Moines or European in it. The term "Car" and "Insurance", as well as the term "Car Insurance" is generic and has no ability to be trademarked.
As any person has the right to purchase the domain name "JacksonvilleFlowerShop.Net" – despite the fact that someone may indeed call their florist business "Jacksonville Flower Shop" – so too should anyone be able to purchase ChurchillCarInsurance.Org, as it is also comprised of a location and a generic term.
As to whether Respondent has a right or legitimate interest in the disputed domain name, Respondent submits that it is unclear how a geo-domain can be trademarked. Locations and generic term domains are available to anyone to purchase. Respondent maintains that, as well as any other party, she has the right to own such a domain.
On the issue of whether the disputed domain name was registered and has been used in bad faith, Respondent submits that as a domain investor and website builder, it has one intention, and that is to work hard and grow its business. It maintains that it had never heard of "Churchill Car Insurance" and assures the Panel that in purchasing the domain name, she had no intention of using it against Complainant or stealing any of its business. It maintains that the disputed domain name was, to it, a strong geo-domain that was a good investment.
2. Respondent registered the disputed domain name on May 29, 2010.
3. (i) the domain name is confusingly similar to the CHURCHILL trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
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."
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.
The Panel will now deal with each of those elements in turn.
Complainant argues that it has rights in the CHURCHILL mark by virtue of its trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,042,931 issued November 28, 1997) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 822,916 issued June 17, 1999). The Panel therefore finds that evidence of trademark registrations with a national trademark authority establishes that Complainant has rights in the CHURCHILL mark for the purposes of Policy ¶ 4(a)(i), even though Respondent is apparently not domiciled where the mark is registered. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant then alleges that Respondent’s <churchillcarinsurance.org> domain name is confusingly similar to Complainant’s CHURCHILL mark because the disputed domain name begins with Complainant’s mark and combines it with only the descriptive terms “car” and “insurance” and the generic top-level domain (“gTLD”) “.org.” The Panel accepts that submission, as it is well established that combining a mark with terms that describe Complainant’s business is an inadequate change to prevent confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that the addition of the gTLD “.org” has no effect on the Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <churchillcarinsurance.org> domain name is confusingly similar to Complainant’s mark according to Policy ¶ 4(a)(i).
Respondent contends that the <churchillcarinsurance.org> domain name is comprised of common geographic and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark. However, the Panel finds, in the first place, 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 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.”).
Secondly, the reality is that a significant proportion of Internet users coming into contact with the disputed domain name would be aware that Complainant is an insurance company and would therefore know that insurance companies generally offer car insurance as one of their services. Other members of the Internet community would know that Complainant itself offers car insurance, as that it probably what they are looking for. That being so, the addition of the generic term “car insurance” does not lessen the likelihood of the domain name being mistaken for the trademark, but increases it.
Complainant has therefore established the first of the three elements that it must establish.
It is now well established that 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) and then the burden of proof shifts to Respondent to show that it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out its prima facie case. The prima facie case comes about because of the following considerations. First, Respondent has chosen for its domain name a reasonably well known trademark and has appended to it the expression “car insurance”, being one of Complainant’s business activities. Secondly, Complainant’s evidence is that it has not licensed or authorized Respondent to use its trademark in the <churchillcarinsurance.org> domain name or anywhere else. Thirdly, Complainant has shown that the WHOIS information lists the domain name registrant as “coolidge road productions” which shows no apparent relation to the disputed domain name, thus indicating that Respondent is not commonly known by the disputed domain name and does not have rights and legitimate pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also 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).
As Complainant has made out its prima facie case, the question is then whether Respondent has been able to rebut it. In the Panel’s opinion, Respondent has not done so. To rebut the prima facie case, Respondent in effect relies on the argument already outlined, namely that the disputed domain name is a “geo-domain”, for it consists of a location and a generic term, which, because such expressions are open to everyone to use, must give rise to a right or legitimate interest in the domain name. The use of generic expressions in a domain name sometimes gives rise to a right or legitimate interest. But that is where the domain name consists solely of the generic expression and it is linked to a landing page or other site promoting goods or services covered by the generic expression, with no suggestion that a trademark owner is being targeted. The present case is entirely different, for the domain name includes the name and trademark of a specific company and one that is clearly being targeted, because the domain name invites the suggestion that it is the domain name of an insurance company named Churchill, which it is not. Such conduct cannot give rise to a right or legitimate interest.
Indeed, the very way in which the domain name is used negates any such right or legitimate interest and puts it outside those provisions of the Policy that show how a right or legitimate interest may arise. The domain name in the present case resolves to a generic links page, displaying various pay-per-click commercial links to providers of the same types of insurance services offered by Complainant. Using Complainant’s mark in a disputed domain name that is routing Internet users to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
As Respondent has not rebutted the prima facie case against it, Complainant has succeeded in making out the second of the three elements that it must establish.
As has already been explained, Complainant alleges that Respondent uses the <churchillcarinsurance.org> domain name to host a variety of commercial links to Complainant’s competitors in the insurance industry. Complainant also claims Respondent uses the domain name, incorporating as it does Complainant’s trademark, to steer Complainant’s intending customers to competing businesses. The Panel accepts that submission and finds that it is established by the evidence.
The result is that the Panel finds that Respondent has attempted to disrupt Complainant’s business and that, accordingly, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).
Complainant also bases its case on Policy ¶ 4(b)(iv) and argues that Respondent has included Complainant’s CHURCHILL mark in the <churchillcarinsurance.org> domain name specifically to attract Complainant’s customers and create a likelihood that those customers will become confused about any association between Complainant and Respondent. Complainant alleges that Respondent attempts to attract and mislead Internet users in this way for commercial gain because the links displayed on Respondent’s resolving website are pay-per-click links that generate revenue for Respondent each time they are clicked.
The Panel accepts that submission and finds that Respondent’s activities indicate bad faith registration and use according to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding 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 or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
In reaching these conclusions, the Panel has given careful consideration to Respondent’s submissions. Respondent argues that as a domain investor and website builder, it has one intention, and that is to work hard and expand its business. Respondent also maintains that it had never heard of "Churchill Car Insurance" and assures the Panel that in purchasing the domain name, it had no intention of using it against Complainant or stealing any of its business. Respondent maintains that, to it, the disputed domain name was a strong geo-domain that was a good investment. All such submissions must be assessed in the course of the Panel’s task in deciding what probably happened and in the course of doing so, the Panel must draw all reasonable inferences open to it from the known facts. In this regard, Respondent’s difficulty is that the words of the domain name make it plain that a connection is being drawn between “Churchill” and car insurance. It is true that there are places named Churchill, but it is extremely unlikely that anyone would think that the domain name was invoking car insurance that had a link of some sort with such a place. It is far more likely that anyone coming across the domain name would assume that it was seeking to invoke a link between car insurance and a company offering that service. Accordingly, although the Panel accepts the objective of Respondent in working hard and expanding its business, its conclusion is that on the balance of probabilities, the domain name was registered and used to disrupt Complainant’s business and create confusion in the market place which constitute bad faith for the purposes of the Policy.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <churchillcarinsurance.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 3, 2010
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