The Royal Bank of Scotland Group plc, Privilege Insurance Company Limited and Direct Line Insurance plc v. Pantages Inc / Pantage
Claim Number: FA1105001387016
Complainant is The Royal Bank of Scotland Group plc, Privilege Insurance Company Limited and Direct Line Insurance plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Pantages Inc / Pantage (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <priviledge.com>, registered with POWER BRAND CENTER CORP.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 4, 2011.
On May 5, 2011, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <priviledge.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 May 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@priviledge.com. Also on May 10, 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 June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <priviledge.com> domain name is confusingly similar to Complainant’s PRIVILEGE mark.
2. Respondent does not have any rights or legitimate interests in the <priviledge.com> domain name.
3. Respondent registered and used the <priviledge.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, The Royal Bank of Scotland Group plc, Privilege Insurance Company Limited and Direct Line Insurance plc (collectively and hereafter “Complainant”), is a large financial, banking, and insurance service provider. The Royal Bank of Scotland Group plc is the parent company of both Privilege Insurance Company Ltd. and Direct Line Insurance plc. Complainant owns multiple federal trademark registrations for the PRIVILEGE mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,324,008 issued March 12, 2004). Complainant uses the mark to market and promote its insurance business.
Respondent, Pantages Inc / Pantage, registered the disputed domain name on November 19, 2008. The disputed domain name resolves to a site offering a directory of links to third-party websites, many of which are Complainant’s competitors.
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.
Complainant contends that it has established its rights in the PRIVILEGE mark by registering that mark with the UKIPO. Previous panels have determined that a trademark registration with the UKIPO is sufficient to establish a party’s rights in a mark under the UDRP. See The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). Therefore, the Panel finds that Complainant registration of the PRIVILEGE mark with UKIPO (e.g., Reg. No. 2,324,008 issued March 12, 2004) establishes its rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed domain name is confusingly similar to its PRIVILEGE mark. Respondent’s <priviledge.com> domain name maintaining phonetic characteristics while adding the letter “d” and the generic top-level domain name “.com.” The Panel finds that the addition of a single letter along with a gTLD do not remove the disputed domain from the realm of confusing similarity. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PRIVILEGE mark under 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 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.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent now bears the burden of proving its rights or legitimate interests in the disputed domain name due to Complainant’s making of a prima facie case, which this Panel finds is sufficient, showing that Respondent lacks rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has not filed any response to attempt to rebut Complainant’s prima facie case. Respondent’s failure to do so allows this Panel to assume Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will still examine the entire record to determine whether Respondent has rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of <priviledge.com> to be “Pantages Inc / Pantage,” and Respondent has offered no evidence to contradict what the WHOIS information appers to indicate. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was 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).
Complainant also asserts that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <priviledge.com> domain name resolves to a site offering links to third-party websites which all resolve to the sites of Complainant’s competitors in the insurance business. The Panel finds that utilizing a domain name to offer links to Complainant’s competitors in the insurance field does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); 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).”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s use of the disputed domain name disrupts its business. Respondent’s <priviledge.com> domain name resolves to a site offering links to Complainant’s competitors in the insurance industry. Internet users may be seeking out Complainant, arrive at Respondent’s site, click a link, and then purchase goods from one of Complainant’s competitors instead of Complainant. The Panel finds that using a disputed domain name in this fashion does in fact disrupt Complainant’s business providing affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See 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); see also 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)).
Complainant also claims that Respondent is using the site for its own commercial gain constituting bad faith registration and use. Respondent’s disputed domain name resolves to a directory site offering links to third-party websites, many of which resolve to the websites of Complainant’s competitors. Presumably, Respondent collects a click-through fee for each Internet user diverted to the linked sites. The Panel finds that using the confusingly similar domain name to operate a site whose purpose is to collect click-through fees by diverting internet users to third-party sites does in fact indicate a commercial gain sought from the disputed domain name, and is therefore bad faith registration and use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <priviledge.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 7, 2011
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