Tesco Personal Finance Ltd.
v. Domain Management Services c/o Corporate Management
Claim Number: FA0612000877982
PARTIES
Complainant is Tesco Personal Finance Ltd. (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tesco-finance.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.
David S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 29, 2006; the
National Arbitration Forum received a hard copy of the Complaint on January 3, 2007.
On December 29, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <tesco-finance.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 January 5, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 25, 2007 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@tesco-finance.com by
e-mail.
A timely Response in electronic copy was received on January 25, 2007, but because no hard copy was
received, the National Arbitration Forum has determined the Response to be
deficient according to Supplemental Rule 5(a).
While deficient, the Response was considered by the Panel and found not
to affect the decision.
On January 30, 2007, an Additional Submission was received from
Complainant and was taken into consideration by the Panel but was not found to
affect the decision.
On January 31, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name <tesco-finance.com> is confusingly similar to
trademarks “TESCO” and “TESCO PERSONAL FINANCE” in which Complainant has
rights, the presence of a hyphen and the word descriptive word “finance”
failing to distinguish the domain name from the mark “TESCO” which is wholly
contained in the domain name.
Furthermore, Complainant also contends that the domain does not
sufficiently distinguish from the “TESCO PERSONAL FINANCE” trademark.
Complainant also contends that Respondent has no rights or legitimate
interests in the domain name since Respondent is not licensed or otherwise
authorized to use the “TESCO” and “TESCO PERSONAL FINANCE” trademarks. Furthermore, Respondent’s use of the domain
name for a website that serves to divert customers from Complainant to its
competitors is contended not to represent either a bona fide offering of goods or services or a legitimate
noncommercial or fair use. Still
further, Complainant contends that there is no evidence that Respondent has
ever been commonly known by the domain name or by the name “Tesco” or “Tesco
Personal Finance” and has never used the domain name in connect with a
legitimate business.
Complainant contends that Respondent’s bad faith is evidenced by the
infringement of the trademarks “TESCO” and “TESCO PERSONAL FINANCE,” by the use
of the domain name in a manner designed to disrupt Complainant’s business by
use on a website featuring links to Complainant’s competitors. Complainant also contends that attempts by
Respondent to intentionally disguise its identity constitute further evidence
of bad faith. Complainant’s reference to
Exhibit E of the Complaint as containing evidence of bad faith has not been
considered due to the manner and circumstances of its receipt.
B. Respondent
Respondent has not denied any of Complainant’s assertions as to
confusing similarity or lack of rights or legitimate interests in the domain
name, and has merely challenged the contentions of bad faith based upon the
content of Exhibit E of the complaint.
However, as noted above, the content of Exhibit E has not been
considered.
C. Additional Submissions
Complainant’s Additional Submission reiterated positions set forth in
the Complaint and argued for consideration of the content of Exhibit E.
FINDINGS
The panel finds that the domain name <tesco-finance.com> is confusingly
similar to the trademarks “TESCO” and “TESCO PERSONAL FINANCE,” that Respondent
has no rights or legitimate interests in the domain name and that it was
acquired and is being used in bad faith.
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 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant 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.
The disputed domain name <tesco-finance.com> is confusingly similar to Complainant’s marks because it fully incorporates Complainant’s licensed word trademark “TESCO” in its entirety, and merely adds to Complainant’s mark a hyphen and the word “finance,” which is a part of Complainant’s “TESCO PERSONAL FINANCE” mark and is descriptive of the services Complainant offers. Pursuant to Policy ¶ 4(a)(i), the addition of a hyphen and a term such as “finance” does not distinguish the Domain Name from the mark wholly contained therein. See Nokia Corporation v. RegisterFly.com- Ref-R# 48083173, FA 818038 (Nat. Arb. Forum Dec. 5, 2006) (finding the <nokia-business.com> domain name confusingly similar to the complainant’s NOKIA mark for the purposes of Policy ¶ 4(a)(i) and stating that “[p]ursuant to Policy ¶ 4(a)(i), the addition of a hyphen and a term such as business do not distinguish the disputed domain name from the mark wholly contained therein.”). The presence of the hyphen in between the words “TESCO” and “FINANCE” does not sufficiently distinguish the Domain Name from Complainant’s marks or from Complainant’s <tescofinance.com> domain name because a consumer or Internet user will perceive no difference between the two versions of Complainant’s mark. See King Edward Technology, Inc. v. Disparate Technologies, Inc., FA 095610 (Oct. 26, 2000) (finding the domain name <swisher-sweets.com> identical or confusingly similar to complainant’s SWISHERSWEETS trademark because “[a] consumer will see no difference between the presence or absence of the space or the hyphen between the words SWISHER and SWEETS.”); see also MB Financial Bank, N.A. v. Holger Bruggemann, FA 819465 (Dec. 4, 2006) (finding “[t]he additions of simple punctuation, such as a hyphen, and the generic top-level domain ‘.com’ d[id] not distinguish the disputed domain name [<mb-bank.com>] from Complainant’s [‘MB’] mark.”). Consequently, the addition of the hyphen in the Domain Name does not negate the confusing similarity between Respondent’s Domain Name and Complainant’s registered marks pursuant to Policy ¶ 4(a)(i). Further, the Domain Name is confusingly similar to Complainant’s “TESCO PERSONAL FINANCE” mark in that it merely omits the descriptive term “personal.”
Respondent has no right to or legitimate
interest in the <tesco-finance.com> domain name since it is not
licensed or otherwise authorized to use the “TESCO” or “TESCO PERSONAL FINANCE”
marks, or any variations thereof.
Respondent registered the disputed domain name on February 8, 2005, long
after Complainant first acquired rights in the “TESCO” and “TESCO PERSONAL FINANCE”
marks. Furthermore, the domain name
resolves to a website with the heading “tesco-finance.com” and links entitled
“Insurance Tesco,” “Tesco Personal Loan,” “Tesco Motor Insurance,” “Tesco Car
Insurance Online,” “Tesco Pet Insurance,” “Finance,” “Loans Personal Finance,”
“Financial Planning,” and “Online Investing,” among others. These links, however, do not connect Internet
users with legitimate TPF or Tesco sites.
Instead, they lead Internet users to other web pages containing
advertising for, and links to the websites of, various providers of financial
services, including Complainant’s competitors.
Such use of the domain name does not represent either 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
The Royal Bank of Scotland Group plc v. Nikita Soloviov, FA 787983 (Nat.
Arb. Forum Nov. 3, 2006) (respondent’s use of a confusingly similar domain name
to divert Internet users to websites unrelated to Complainant’s business does
not represent 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant’s business does not represent 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).”). Thus, Respondent’s
use of the Domain Name to divert Internet users to alternative websites,
including those of Complainant’s competitors, does not represent 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).
Additionally, there is no evidence that Respondent has ever been commonly known by the Domain Name, or by the names “TESCO PERSONAL FINANCE” or “TESCO.” Importantly, Respondent does not deny that it has never used the domain name <tesco-finance.com> in connection with a legitimate business.
Respondent has not denied and the evidence
reflects that the domain name <tesco‑finance.com>
was registered primarily for the
purpose of disrupting Complainant’s business and intentionally exploiting Complainant’s
goodwill by using a domain name which is confusingly similar to Complainant’s
marks and domain name to attract users to a directory website containing
commercial links to the websites of Complainant’s competitors. Such use of an infringing domain name
constitutes evidence that registration and use was done primarily for the
purpose of disrupting Complainant’s business in violation of Policy ¶
4(b)(iii). For example, in National Westminster Bank plc v. 121
Internet c/o Direct Communication, FA 671023 (Nat. Arb. Forum May 16,
2006), the panel found that the respondent had registered and used the <natwest.net> domain name for
the primary purpose of disrupting the business of the complainant, which owned
the NATWEST mark, because the domain name resolved to a website featuring links
to the complainant’s competitors in the insurance industry. Like the respondent in National Westminster Bank, Respondent’s website contains links to
Complainant’s competitors. Thus,
Respondent is using Complainant’s well-known mark to attract to its website
Internet users interested in Complainant’s services and then steering those
users to the websites of Complainant’s competitors. Such use of the Domain Name threatens
to disrupt Complainant’s business by, for example, causing Complainant to
suffer loss of customers, business, and revenue. Respondent’s
use of the Domain Name to promote personal financial services that compete with
Complainant’s business “provides evidence that it registered the domain name
primarily to disrupt Complainant’s business in violation of Policy ¶
4(b)(iii).”
Further, it has been recognized that use of a
domain name similar to the respondent’s use of the <tesco-finance.com> domain name can be inferred to be for
commercial gain because Respondent is likely receiving revenues for any
searches conducted or links followed by misdirected Internet traffic. See, e.g., Tesco Personal Finance Ltd. v. RegisterFly.com - Ref#
11914536, FA 832606 (Dec. 15, 2006) (finding it reasonable to infer
from a link-driven website that the respondent was benefiting financially from
its operation). Furthermore, a respondent’s
diversion of Internet users seeking a complainant’s website to its own website
for commercial gain creates a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, endorsement, or affiliation of its website
and, therefore, provides evidence of bad faith registration under Policy ¶
4(b)(iv). For instance, in State Farm Mut. Auto. Ins. Co. v. Albert
Jackson, FA 314119 (Nat. Arb. Forum Sept. 28, 2004), where the respondent’s
domain name <wwwstatefarminsurance.com>
resolved to a website that provided links to insurance websites that competed
with Complainant State Farm, the panel inferred that the respondent was
using the confusingly similar domain name for commercial gain and concluded
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv). See also Tesco Personal Finance Ltd.
v. RegisterFly.com - Ref# 11914536, FA 832606 (Dec. 15, 2006) (respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because it was “attempting to financially benefit from the likelihood of confusion
it created by directing Internet users seeking the complainant’s services to
the above-referenced website which contains references to the financial
services of others.”). Thus,
Respondent’s reliance on the goodwill surrounding Complainant’s mark to
redirect Internet users to a search engine website unrelated to Complainant for
Respondent’s own commercial gain equates to bad faith use and registration of
the Domain Name in violation of Policy ¶ 4(b)(iv). See National Westminster Bank plc v. 121 Internet,
FA 671023 (Nat. Arb. Forum May 16, 2006) (finding a violation of Policy ¶
4(b)(iv) where the respondent was diverting Internet users seeking the
complainant’s financial and insurance services to its own website for
commercial gain in the form of referral fees).
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 <tesco-finance.com> domain name be TRANSFERRED
from Respondent to Complainant.
David S. Safran Panelist
Dated: February 13, 2007
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