Direct Line Insurance plc v. Edward Nyari S.L. c/o Edward Nyari
Claim Number: FA0701000903016
Complainant is Direct Line Insurance plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <directlinelocal.com> and <directline-local.com>, registered with Key-Systems Gmbh.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2007.
On February 8, 2007, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <directlinelocal.com> and <directline-local.com> domain names are registered with Key-Systems Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 February 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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@directlinelocal.com and postmaster@directline-local.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directlinelocal.com> and <directline-local.com> domain names are confusingly similar to Complainant’s DIRECT LINE mark.
2. Respondent does not have any rights or legitimate interests in the <directlinelocal.com> and <directline-local.com> domain names.
3. Respondent registered and used the <directlinelocal.com> and <directline-local.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Direct Line Insurance plc, offers a broad range of financial products and services, such as car insurance, home insurance, loans, and mortgages, to over five million customers worldwide. Complainant holds numerous trademark registrations for its DIRECT LINE mark, including registrations with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,392,344 issued September 6, 1991), the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,518,906 issued December 18, 2001), and the European Union Office for Harmonization in the Internal Market (Reg. No. 866,186 issued October 22, 1999). Complainant uses the <directline.com> and <directline.co.uk> domain names to offer direct online access to Complainant’s financial products and services.
Respondent’s <directlinelocal.com> and <directline-local.com> domain names each resolve to websites that contain links and information regarding businesses directly competing with Complainant’s business. Respondent registered both of the disputed domain names on May 4, 2006.
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 has submitted evidence of trademark
registrations for the DIRECT LINE mark with various trademark authorities
worldwide, including the UKPO, the USPTO, and the European Union Office for
Harmonization in the Internal Market.
The Panel finds that evidence of trademark registrations sufficiently
establishes Complainant’s rights in the DIRECT LINE mark for purposes of Policy
¶ 4(a)(i). See The Royal Bank of
Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains,
FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the
PRIVILEGE mark with the
Respondent’s <directline-local.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The panel in Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000), held that the disputed domain name <marriott-hotel.com> was confusingly similar to the complainant’s MARRIOTT mark as neither the addition of a generic term nor the presence of a hyphen distinguish a domain name from a mark in any meaningful way. Likewise, in Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000), the panel came to a similar conclusion when examining whether the <quixtar-sign-up.com> domain name was confusingly similar to the complainant’s QUIXTAR mark. As a result, the Panel in the instant case holds that Respondent’s <directline-local.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark for purposes of Policy ¶ 4(a)(i).
Additionally, Complainant contends that Respondent’s <directlinelocal.com> domain name is confusingly similar to Complainant’s registered marks. Here, Respondent’s domain name contains Complainant’s DIRECT LINE mark in its entirety and adds the generic term “local” and the generic top-level domain (“gTLD”) “.com.” As above, the Panel finds that neither the addition of a generic term nor a gTLD distinguishes Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in either of the <directlinelocal.com> or <directline-local.com> domain names. The Panel finds that Complainant’s assertion of a lack of rights or legitimate interests in this case is sufficient to shift the burden from Complainant to Respondent to show evidence of its rights or legitimate interests in the disputed domain names under the ¶ 4(c) elements. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <directlinelocal.com> and <directline-local.com> domain
names to operate websites that contain links and information regarding
businesses that compete with Complainant’s products and services. The Panel infers from Respondent’s use of the
disputed domain names that it is collecting “click-through” fees for each
misdirected Internet user connecting to a competing website. As a result, the Panel finds that Respondent
has failed to use the <directlinelocal.com> and <directline-local.com> domain
names in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”).
Moreover, Complainant contends that Respondent is neither commonly known by the disputed domain name nor authorized to register domain names featuring Complainant’s DIRECT LINE mark. The Panel finds that, in the absence of evidence showing otherwise, Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <directlinelocal.com> and <directline-local.com> domain
names to generate “click-through” fees by misdirecting Internet users to
Complainant’s competitors. The Panel
finds that Respondent’s use amounts to a disruption of Complainant’s business
and is evidence of Complainant’s bad faith registration and use of the <directlinelocal.com> and <directline-local.com> domain
names under Policy ¶ 4(b)(iii). See Franpin SA v. Paint Tools S.L.,
D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a
company financially linked to the complainant’s main competitor, registered and
used the domain name in question to disrupt the complainant’s business); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy []¶
4(b)(iii) . . . .”).
Moreover, Complainant contends that Respondent is profiting from confusion caused by Internet users who inadvertently stumble onto Respondent’s website when seeking Complainant’s legitimate website. Under Policy ¶ 4(b)(iv), evidence of commercial gain from Internet user confusion further amounts to bad faith registration and use. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directlinelocal.com> and <directline-local.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 16, 2007
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