national arbitration forum

 

DECISION

 

Churchill Insurance Co. Ltd. v. Above.com Domain Privacy

Claim Number: FA1102001371570

 

PARTIES

Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <churchillcarinsureance.com>, registered with ABOVE.COM PTY LTD.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2011; the National Arbitration Forum received payment on February 7, 2011.

 

On February 7, 2011, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <churchillcarinsureance.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@churchillcarinsureance.com.  Also on February 8, 2011, 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 March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <churchillcarinsureance.com> domain name is confusingly similar to Complainant’s CHURCHILL mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Churchill Insurance Co. Ltd., is an insurance company based in the United Kingdom.  Complainant owns the CHURCHILL mark and has been providing various insurance services under that mark since 1989.  Complainant holds numerous trademark registrations for its CHURCHILL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2042931 issued November 28, 1997).

 

Respondent, Above.com Domain Privacy, registered the <churchillcarinsureance.com> domain name on September 4, 2010.  The disputed domain name resolves to a directory website featuring a variety of hyperlinks which directly compete with Complainant’s insurance business.

 

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 asserts its rights in the CHURCHILL mark.  Previous panels have come to the conclusion that a complainant can establish rights in a mark through registration with a federal trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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)).  The Panel finds that Complainant is not required to register it’s mark within the country of Respondent.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also 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).  Complainant holds numerous trademark registrations for its CHURCHILL mark including registrations with UKIPO (e.g., Reg. No. 2042931 issued November 28, 1997).  Therefore, the Panel finds that Complainant has demonstrated its rights in the CHURCHILL mark through its trademark registration pursuant to Policy ¶ 4(a)(i). 

 

Complainant argues that Respondent’s <churchillcarinsureance.com> domain name is confusingly similar to its CHURCHILL mark.  The disputed domain name uses Complainant’s entire mark and differs only by adding the descriptive words “car” and the misspelled “insureance,” which are obviously related to Complainant’s business of providing insurance, and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the inclusion of descriptive words which reference Complainant’s business does not preclude a finding of confusing similarity to Complainant’s mark.  See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity  with regard to Policy ¶ 4(a)(i).”).  The Panel also finds that the affixation of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark.  See 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.”).  Accordingly, the Panel finds that Respondent’s <churchillcarinsureance.com> domain name is confusingly similar to Complainant’s CHURCHILL mark under Policy  ¶ 4(a)(i). 

 

The Panel concludes that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the <churchillcarinsureance.com> domain name.  In AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006), the panel found that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”  Here, Complainant has made a prima facie showing in support of its claims against Respondent.  Respondent never submitted a response to the Complaint, which the Panel can interpret as evidence that Respondent does not have rights or legitimate interests in the dispute domain name according to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant additionally asserts that it has not licensed or permitted Respondent to use its CHURCHILL mark or any variation of the mark in the disputed domain name.  The WHOIS information identifies Respondent as “Above.com Domain Privacy,” which is not similar to the <churchillcarinsureance.com> domain name.  The Panel concludes that Respondent is not commonly known by the disputed 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). 

Respondent’s disputed domain name resolves to a directory website of third-party links to Complainant’s competitors in the insurance industry.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the <churchillcarinsureance.com> domain name to host a website which purposefully directs 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 under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant maintains that Respondent’s use of the <churchillcarinsureance.com> domain name disrupts its business.   The disputed domain name resolves to a website featuring hyperlinks to commercial websites, all of which compete with Complainant’s insurance business.  Internet users intending to purchase or utilize Complainant’s insurance services may find Respondent’s website due to the confusingly similar disputed domain name.  Users may then be directed to a competing website and purchase similar services from someone other than Complainant as a result.  Complainant asserts that this may lead to a loss of customers and business.  The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration 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).

 

The Panel infers that Respondent likely receives click-through fees from the third-party links previously mentioned.  Internet users searching online for Complainant’s information may discover Respondent’s website instead.  Given Respondent’s use of Complainant’s CHURCHILL mark within the disputed domain name, users may become confused as to Complainant’s sponsorship of, or affiliation with, the resolving website and the third-party links offered.  Respondent tries to capitalize off this confusion by receiving click-through fees.  The Panel finds that such use of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).

 

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

 

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 <churchillcarinsureance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  March 17, 2011

 

 

 

 

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