national arbitration forum

 

DECISION

 

Churchill Insurance Company Limited v. Neil Charlton

Claim Number: FA0702000912281

 

PARTIES

Complainant is Churchill Insurance Company Limited (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., 150 Fayetteville Street, Suite 1400, Post Office Box 389, Raleigh, NC 27602.  Respondent is Neil Charlton (“Respondent”), 6, Wine Close, London E1W3RQ, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <churchhill-insurance.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2007.

 

On February 7, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <churchhill-insurance.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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@churchhill-insurance.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 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

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 <churchhill-insurance.com> domain name is confusingly similar to Complainant’s CHURCHILL mark.

 

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

 

3.      Respondent registered and used the <churchhill-insurance.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Churchill Insurance Company Limited, has continuously used the CHURCHILL mark in reference to its financial and insurance services in the United Kingdom since 1989.  Complainant has registered the mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,042,931 issued November 28, 1997) and the EU Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 822,916 issued June 17, 1999).  Complainant also utilizes several domain names containing the mark, including <churchill.com>, <churchill-insurance.com>, and <churchill.co.uk>.

 

Respondent’s <churchhill-insurance.com> domain name, which it registered on January 6, 2005, resolves to a commercial search engine website featuring links to the websites of competing financial and insurance companies.

 

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

 

As Complainant holds trademark registrations for the CHURCHILL mark with the UKPO and OHIM, Complainant has sufficiently demonstrated its rights in the mark for purposes of Policy ¶ 4(a)(i).  See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also The Royal Bank of Scot. Grp. 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).”).

 

The <churchhill-insurance.com> domain name contains a misspelled variation of Complainant’s CHURCHILL mark, a hyphen, the extra term “insurance,” and the generic-top level domain (“gTLD”) “.com.”  In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark.  In Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., D2006-0714 (WIPO Aug. 17, 2006), the panel found that the <vallpak.com> domain name, a common misspelling of the complainant’s VALPAK mark, was confusingly similar to the mark under Policy ¶ 4(a)(i).  Moreover, the panel in Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) concluded that the addition of punctuation marks such as hyphens was irrelevant to a determination of confusing similarity pursuant to Policy ¶ 4(a)(i).  As the alterations in the <churchhill-insurance.com> domain name are similar to these cases, the Panel concludes that Respondent has failed to sufficiently differentiate the disputed domain name from the mark.  As a result, the Panel finds the disputed domain name to be confusingly similar to the mark under Policy ¶ 4(a)(i). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the <churchhill-insurance.com> domain name.  Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <churchhill-insurance.com> domain name.  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); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent has registered the domain name under the name “Neil Charlton,” and there is no other evidence in the record suggesting that Respondent is commonly known by the contested domain name.  As a result, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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.”).

 

Furthermore, Respondent’s <churchhill-insurance.com> domain name, which is confusingly similar to Complainant’s registered CHURCHILL mark, resolves to a web page containing links to Complainant’s competitors in the financial and insurance industries.  Respondent likely receives click-through fees for diverting consumers to these websites.  Therefore, Respondent is not using the disputed domain name in connection with 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also 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)).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to manage a web page displaying links to the websites of Complainant’s competitors.  The Panel infers that Respondent receives click-through fees for each consumer it diverts to these websites.  The panel in Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) found 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 from click-through fees.  In The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007), the panel also found bad faith where the respondent used domain names confusingly similar to the complainant’s mark to maintain pay-per-click sites.  In line with these and other previous panel cases, the Panel in this case finds that Respondent has registered and is using the <churchhill-insurance.com> domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark, which constitutes bad faith under Policy ¶ 4(b)(iv).

 

Because Respondent’s website at the disputed domain name contains links to the websites of Complainant’s competitors, the Panel finds that Respondent has registered and used the <churchhill-insurance.com> domain name for the primary purpose of disrupting Complainant’s business in violation of 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 doamin name to operate a commercial search engine with links to the complainant’s competitors); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business).

 

Furthermore, Respondent’s confusingly similar <churchhill-insurance.com> domain name contains a common misspelling of Complainant’s CHURCHILL mark, which provides evidence of typosquatting.  Typosquatting is an additional factor in the consideration of bad faith registration and use under Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark); see also Nextel Commc'ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 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).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

 

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 <churchhill-insurance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  March 12, 2007

 

 

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