national arbitration forum

 

DECISION

 

Churchill Insurance Co. Ltd. v. Shoval oren llc

Claim Number: FA1102001371578

 

PARTIES

Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA.  Respondent is Shoval oren llc (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <churchillcarinsuranc.com>, registered with NamesDirect.

 

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.

 

Judge Ralph Yachnin 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, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <churchillcarinsuranc.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name.  NamesDirect has verified that Respondent is bound by the NamesDirect 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@churchillcarinsuranc.com.  Also on February 9, 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 Ralph Yachnin as Panelist. 

 

Respondent submitted correspondence which does not comply with the Rules  which would enable it to be deemed a Reply.  Notwithstanding, in the interest of justice and equity the aforesaid has been taken into consideration in the making of this decision.

 

 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.

 

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 <churchillcarinsuranc.com> domain name is confusingly similar to Complainant’s CHURCHILL mark.

 

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

 

3.    Respondent registered and used the <churchillcarinsuranc.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 providing various types of insurance throughout.  Complainant owns the CHURCHILL mark and has used the mark since 1989 in connection with its insurance services and products.  Complainant holds a trademark registration for its CHURCHILL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2042931 issued November 28, 1997).

 

Respondent, Shoval oren llc, registered the <churchillcarinsuranc.com> domain name on June 9, 2010.  The disputed domain name resolves to a directory website featuring third-party links, the majority of which provide insurance products and services in competition 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 maintains that it has demonstrated its rights in the CHURCHILL mark.  Prior panels have determined that a complainant can establish rights in its 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 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).”).  Here, Complainant holds a trademark registration for its CHURCHILL mark with UKIPO (e.g., Reg. No. 2042931 issued November 28, 1997).  Therefore, the Panel concludes that Complainant has established rights in its CHURCHILL mark through its trademark registration, according to Policy ¶ 4(a)(i). 

 

Complainant asserts that Respondent’s <churchillcarinsuranc.com> domain name is confusingly similar to its CHURCHILL mark.  The disputed domain name utilizes Complainant’s entire mark and merely differs by the addition of the descriptive words “car” and “insuranc,” (a misspelled form of the term insurance) which clearly relate to one sector of Complainant’s insurance business, and the insertion of a generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of descriptive words and a gTLD are insufficient to distinguish the disputed domain name from Complainant’s mark.  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s CHURCHILL mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant maintains that Respondent lacks rights and legitimate interests in the <churchillcarinsuranc.com> domain name.  In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the Panel said, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”  Here, Complainant has made a prima facie showing in support of its claims.  Given Respondent’s failure to submit a response, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  The Panel opts to first look at the record and determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions. 

 

Complainant alleges that Respondent is not commonly known by the <churchillcarinsuranc.com> domain name.  The WHOIS information identifies Respondent as “shoval oren llc,” which is not similar to the disputed domain name.  Complainant asserts that Respondent has provided no information that would support a finding that it is commonly known by the disputed domain name, and asserts that it has not authorized or licensed Respondent to use its CHURCHILL mark.  The Panel finds that Respondent is not commonly known by the <churchillcarinsuranc.com> domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent’s disputed domain name resolves to a directory website with third-party links to Complainant’s competitors in the insurance industry.  Respondent likely collects click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to websites selling insurance services and products which directly compete with Complainant’s business 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). 

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <churchillcarinsuranc.com> domain name disrupts its business by potentially steering customers to competing websites.  Respondent’s resolving website features many third-party links, some of which directly compete with Complainant’s insurance business.  Internet users intending to purchase insurance and related products from Complainant may find Respondent’s website instead due to the confusingly similar disputed domain name and may click on the third-party links to purchase the same insurance products from a competitor.  The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business and 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 aforementioned links.  Internet users doing an online search for Complainant may find Respondent’s website and because of Respondent’s use of Complainant’s CHURCHILL mark in its disputed domain name, users may misunderstand Complainant’s association or affiliation with the resolving website and featured links.  Respondent attempts to profit from this likelihood of confusion through the receipt of click-through fees.  The Panel finds that such use of the <churchillcarinsuranc.com> 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 <churchillcarinsuranc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: March 8, 2011

 

 

 

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