National Arbitration Forum

 

DECISION

 

The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C.

Claim Number: FA0605000714952

 

PARTIES

Complainants are The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited (“Complainants”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602.  Respondent is Demand Domains, c/o C.S.C. (“Respondent”), represented by Derek A. Newman, of Newman & Newman, 505 Fifth Avenue South, Suite 610, Seattle, WA 98104.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <privelage.com>, registered with Enom, Inc.

 

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.

 

Hon. Nelson A. Diaz, Terry F. Peppard, and Anne M. Wallace as Panelists.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on May 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.

 

On June 5, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <privelage.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 27, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@privelage.com by e-mail.

 

On June 23, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of 14 days to respond to the Complaint, because Respondent did not procure counsel until June 20, 2006, leaving it with insufficient time to investigate the underlying claim.  On June 26, 2006, the National Arbitration Forum, with Complainants’ consent, granted Respondent an extension and set a new deadline of July 11, 2006 for a filing of a Response.

 

A timely Response was received and determined to be complete on July 11, 2006.

 

A timely Additional Submission was received from Complainants on July 17, 2006 and determined to be complete pursuant to Supplemental Rule 7.

 

On July 19, 2006, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz, Terry F. Peppard, and Anne M. Wallace as Panelists.

 

A timely Additional Submission was received from Respondent on July 24, 2006 and determined to be complete pursuant to Supplemental Rule 7.

 

RELIEF SOUGHT

Complainants requests that the domain names be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A. Complainants

 

·                    Complainants assert that they have established rights in the PRIVILEGE mark and have used the mark to advertise and promote their insurance services under the trade name Privilege Insurance Company Limited.  Complainants assert that they hold numerous registrations for PRIVILEGE and related marks, including registrations with the United Kingdom Patent Office and the Office for Harmonization in the Internal Market.

·                    Complainants further assert that they and their affiliates own and use domain names incorporating the PRIVILEGE mark, including <privilege.com>, <privilege.co.uk>, and <privilegeinsurance.com>.

·                    Complainants maintain that the disputed domain name is confusingly similar to Complainants’ PRIVILEGE mark because the disputed domain name is an intentional misspelling of Complainants’ mark and such use constitutes “typosquatting.”

·                    Complainants assert that there is no evidence in the record indicating that Respondent is commonly known by the disputed domain name and, specifically,  the relevant WHOIS information lists the registrant of the domain name as “Demand Domains c/o C.S.C.”  Complainants also assert that they have not authorized or licensed Respondent to register or use domain names incorporating Complainants’ mark or any variation thereof.

·                    Complainants allege that Respondent is not using the disputed domain name 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), because the disputed domain name resolved to Respondent’s website that redirects users to various websites offering, among other things, services in direct competition with Complainants’ services.

·                    Complainants allege that by directing insurance purchasers to a web site offering competing services, Respondent is attempting to generate revenue by diverting Internet users seeking Complainants’ services to its own website through a false association with Complainants’ PRIVILEGE mark.

 

B. Respondent

 

·                    Respondent alleges that its business is purchasing domain names with generic terms and misspellings of generic terms and using those domains to provide search services to Internet users.

·                    Respondent asserts that on these sites, Respondent provides consumers with information concerning various bona fide goods and services.  Specifically, Respondent asserts that on the disputed domain <privelage.com>, it offers information concerning Complainants’ services as well as other services associated with the mark PRIVILEGE.

·                    Respondent asserts that Complainants lack rights in the PRIVILEGE mark because:  (1) privilege is a generic term which appears in dictionaries; (2) Complainants do not hold any U.S. trademark registrations for the PRIVILEGE mark; (3) other entities use the PRIVILEGE mark in the U.S. in connection with insurance services; (4) numerous other entities in the United Kingdom use the PRIVILEGE mark in connection with services unrelated to Complainants’; and (5) a WIPO dispute resolution panel held that Complainants had no rights in the term “privilege.”

·                    Respondent asserts that it has rights in the PRIVILEGE mark because Respondent provides legitimate search related services, distributing content from Google, Yahoo!, and Overture, and because Respondent was not aware of Complainants or their mark at the time of Respondent’s registration of the disputed domain name.

·                    Finally, Respondent asserts that its registration and use of the domain name is not in bad faith because one of the links on Respondent’s website is to Complainants’ services, and because Complainants have failed to show that consumers are likely to associate the word “privilege” with Complainants’ services.

 

C. Complainants’ Additional Submission

 

Complainants’ additional submission reiterates their position that they have rights in the PRIVILEGE mark, that Respondent, who by its own admission selected an intentional misspelling of Complainants’ mark to offer links to services related to Complainants has no rights or legitimate interests in the mark, and that Respondent’s registration and use is in bad faith.

 

D. Respondent’s Additional Submission

 

Respondent’s additional submission similarly reiterates its position that it has rights and legitimate interests in the use of the domain name to provide its search related services, that Complainants’ rights in the PRIVILEGE mark and weak and entitled to minimal protection, and finally that Respondent did not register and does not use the domain name in bad faith.

 

FINDINGS

The Panel finds that Complainants have established rights in the PRIVILEGE mark both in the United Kingdom and in the United States, and that Complainants use the mark in connection with insurance services.  The Panel finds that Respondent’s domain name, <privelage.com>, is confusingly similar to Complainants’ mark.

 

The Panel further finds that Respondent is not commonly known by the domain name for purposes of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in respect of the domain name.

 

The Panel finds that the Respondent’s use of the domain name to operate a website featuring links to competing services 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).

 

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 Complainants 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 Complainants 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 Panel finds that Complainant has registered the PRIVILEGE mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,324,008 issued March 12, 2004; Reg. No. 2,202,813 issued May 31, 2002; Reg. No. 2,202,812 issued February 20, 2002) and has continuously used the mark in connection with financial and insurance services since 1994.  The Panel finds that Complainants’ UK trademark registrations are sufficient for Complainants to establish rights in the PRIVILEGE mark pursuant to Policy ¶ 4(a)(i).  See The Royal Bank of Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainants’ registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainants’ rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. The 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).

 

The Panel finds that Respondent’s <privelage.com> domain name is confusingly similar to Complainants’ PRIVILEGE mark because the disputed domain name contains a common misspelling of Complainants’ mark and merely substitutes the second “i” for an “e” and “e” for an “a.”  The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).

 

Complainants have not registered the PRIVILEGE mark in the United States, where Respondent resides.  However, the Panel finds that the Policy does not require a complainant to own a trademark registration in the country of the respondent’s residence in order for a complainant to show rights in a mark.  Therefore, the Panel finds that Respondent’s argument has no merit under Policy ¶ 4(a)(i).  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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  The Panel further finds that Respondent’s attempts to undercut the weight of Complainants’ rights by pointing out that Complainants’ do not allege any rights in the U.S. is particularly irrelevant in light of Respondent’s specific targeting of customers in the United Kingdom, as evidenced by content on Respondent’s website, for example a link titled “Privilege Car Insurance, UK Apply here.”

 

Finally, the Panel finds Respondent’s reliance on Direct Line Ins. Plc., et al. v. Snook, D2002-0870 (WIPO Nov. 6, 2002) is misplaced for two reasons.  First, the relevance of that decision is greatly diminished by the fact that, subsequent to that decision, Complainants’ applied for and received registration for their PRIVILEGE mark in the United Kingdom.  Second, and more importantly, the question of Complainants’ rights in the PRIVILEGE mark was not squarely before that panel.  At issue in that case was whether the domain name <ihateprivilege.com> was confusingly similar to Complainants’ PRIVILEGE mark.  Any attempt by Respondent to analogize its case to that case is wholly inapt.  In that case, any potential for customer confusion was severely diminished because it is obvious that a domain name proceeded by “ihate” is not, in fact, the website for the product.  Such is not the case here.  By Respondent’s own admission, its use of the <privelage.com> domain name is intended to attract consumers seeking Complainants’ services.

 

Rights or Legitimate Interests

 

The Panel notes that, once Complainants have made the necessary prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainants’ Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

The Panel finds that Respondent is not commonly known by the disputed domain name, and that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Respondent’s website at the <privelage.com> domain name is a commercial web directory displaying links to Complainants’ competitors in the financial and insurance services industries.  Despite Respondent’s assertion that there is a link to Complainants’ own website on Respondent’s website, the link at Respondent’s <privelage.com> domain name actually resolves to the <compare-carinsurance.com> domain name, a website displaying contact information for twenty-one different automobile insurance providers in the United Kingdom.  The Panel finds that Respondent’s use of the <privelage.com> for commercial gain, presumably by earning “click-through” fees for each consumer Respondent redirects to the websites of Complainants’ competitors, does not constitute 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

The Panel also finds that because the <privelage.com> domain name is a common misspelling of Complainants’ PRIVILEGE mark, Respondent has engaged in typosquatting, which suggests that Respondent has no rights or legitimate interests in the <privelage.com> domain name pursuant to Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainants’ <indymac.com> website but mistakenly misspell Complainants’ mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainants’ LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

Registration and Use in Bad Faith

 

The Panel finds that by redirecting Internet users seeking Complainants’ financial and insurance services to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Moreover, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent has evidenced its bad faith by diverting Internet users searching for Complainants’ financial and insurance services to the websites of Complainants’ competitors for commercial gain, presumably by earning referral fees for each consumer Respondent redirects to other websites.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

The Panel finds further that, based on the totality of the circumstances, Respondent’s registration and use of the <privelage.com> domain name is indicative of bad faith under Policy ¶ 4(a)(iii).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

 

The Panel finds that Respondent has engaged in typosquatting by registering and using a domain name that is a common misspelling of Complainants’ PRIVILEGE mark and redirecting Internet users seeking Complainants’ financial and insurance services to competing websites.  See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainants’ web site, given the fact that Complainants’ website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur.  This typosquatting is evidence of bad faith.”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum Jul. 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).

 

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 <privelage.com> domain name be TRANSFERRED from Respondent to Complainants.

 

 

 

Hon. Nelson A. Diaz, Terry F. Peppard, and Anne M. Wallace, Panelists
Dated: August 2, 2006