Churchill Insurance Co. Ltd. v. Lee Stenning c/o Discountedorfree.com Ltd.
Claim Number: FA0703000930710
Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Lee Stenning c/o Discountedorfree.com Ltd. (“Respondent”), Birchen Lane, Bramblewood, Haywards Heath RH16 1SA, GB.
The domain name at issue is <chuchill.com>, registered with Schlund+Partner Ag.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 1, 2007; the National Arbitration Forum received a hard copy of the Complaint March 5, 2007.
On March 9, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <chuchill.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 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@chuchill.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <chuchill.com>, is confusingly similar to Complainant’s CHURCHILL mark.
2. Respondent has no rights to or legitimate interests in the <chuchill.com> domain name.
3. Respondent registered and used the <chuchill.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Churchill Insurance Co. Ltd., is an insurance
company based in the
Respondent is a member of Complainant’s affiliate program through a company called TradeDoubler. This affiliate program allows affiliates to provide links to Complainant’s website on their unrelated websites in order to obtain pay-per-click revenues. Despite the fact that the affiliate program explicitly prohibits affiliates from reflecting Complainant’s CHURCHILL mark in a domain name or altering Complainant’s mark in anyway, Respondent registered the <chuchill.com> domain name June 10, 2003. Respondent is using the disputed domain name to direct traffic to its website, which features a link to Complainant’s genuine website.
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 will draw such inferences as the Panel 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 Complainant to 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’s November 28, 1997 UKPO registration of its
CHURCHILL mark significantly predated Respondent’s registration of the <chuchill.com> domain name. The Panel finds that Complainant established
rights in the CHURCHILL mark as required by Policy ¶ 4(a)(i). See 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).”); see also DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb.
Forum Dec. 16, 2004) (finding the panel recognizes the distinctive nature of
the complainant’s DATINGDIRECT.COM mark through registration with the United
Kingdom Patent Office).
The disputed domain name, <chuchill.com>, is confusingly similar to Complainant’s mark as it mimics Complainant’s CHURCHILL mark but deletes the letter “r.” Respondent misspelled Complainant’s mark, seeking to mimic a common typographical error, and Respondent did not create a domain name that is distinct from Complainant’s mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights and legitimate interests in the mark contained in its misspelled form in the disputed domain name that Respondent registered. Complainant asserts that Respondent lacks such rights or legitimate interests in the disputed domain name. Previous panels, including those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), have found that a complainant’s assertions constitute a prima facie case under the Policy, shifting the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c). In this case, Respondent failed to take advantage of the opportunity to submit a Response, depriving the Panel of any evidence or arguments in support of its rights or legitimate interests. In Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.” While this Panel concurs with the reasoning of the Am. Express Co. panel, it nonetheless evaluates the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to its website, featuring a link to Complainant’s genuine website. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not offering any goods or services of its own at its website. The Panel also finds that Respondent’s use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because, presumably, Respondent collects pay-per-click revenues from the link on its website. Thus, the Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
No available evidence shows that Respondent is commonly
known by the <chuchill.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Lee Stenning,” a name that has no obvious
relationship to the disputed domain name.
Complainant has not given Respondent permission to reflect its marks in
a domain name; and has, in fact, explicitly prohibited Respondent from doing
so. The Panel finds that Respondent is
not commonly known by the disputed domain name and has not satisfied Policy ¶
4(c)(ii). See
Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat.
Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by
<aolcamera.com> or <aolcameras.com> because the respondent was
doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”);
see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb.
20, 2003) (noting that “the disputed domain name does not even correctly spell
a cognizable phrase” in finding that the respondent was not “commonly known by”
the name “girls gon wild” or <girlsgonwild.com>).
In addition to failing to establish evidence of rights or legitimate interests under Policy ¶¶ 4(c)(i)-(iii), Respondent’s registration of a typosquatted domain name is further evidence that Respondent lacks rights or legitimate interests. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) described typosquatting when 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 Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c.’” In this case, the disputed domain name deletes the letter “r” from Complainant’s mark. The Panel finds that Respondent’s typosquatting demonstrates further that Respondent lacks rights or legitimate interests in the disputed domain name. See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Furthermore, the Panel finds that Respondent’s abuse of its
membership in Complainant’s affiliate program is further evidence that it lacks
rights or legitimate interests in the disputed domain name. See Deluxe Corp.
v.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <chuchill.com> domain name, which is
confusingly similar to Complainant’s CHURCHILL mark, to redirect Internet users
to its website. Because the disputed
domain name is a typosquatted version of Complainant’s mark, Internet users
seeking Complainant’s genuine website will be redirected to Respondent’s
website instead through a simple misspelling or typographical error. Respondent is presumably profiting from this
confusion by collecting pay-per-click referral fees. The Panel finds that this use demonstrates
bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding bad faith where respondent used a misspelling of the
complainant’s famous mark to attract Internet users to a series of
advertisements).
The Panel
recognizes that circumstances other than those outlined in Policy ¶¶ 4(b)(i)-(iv) can demonstrate bad faith registration and use. See
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 [Policy ¶ 4(b)], does not mean that the
domain names at issue were not registered in and are not being used in bad
faith.”). Specifically, Respondent has
engaged in typosquatting by registering a domain name that reflects a common
misspelling or typographical error of Complainant’s CHURCHILL mark. The Panel finds Respondent’s typosquatting to
be further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also Zone
Labs, Inc. v. Zuccarini, FA 190613
(Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of
[the <zonelarm.com> domain name] that capitalizes on the typographical
error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
In this case, additional evidence of bad faith registration
and use is Respondent’s registration and use of the disputed domain name
despite actual knowledge of Complainant’s CHURCHILL mark. Respondent is a member of Complainant’s
affiliate program, and had notice that Complainant prohibits registration of a
domain name that includes Complainant’s mark.
Thus, as a member of Complainant’s affiliate program Respondent had actual
knowledge of Complainant’s rights in its mark.
The Panel finds that Respondent’s use of Complainant’s mark in a domain
name despite actual knowledge of Complainant’s rights in the CHURCHILL mark
also supports findings of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See
Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Sports Auth. Mich., Inc.
v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y
registering the ‘typosquatted’ domain name in [Complainant’s] affiliate
program, Respondent profits on the goodwill of [Complainant’s] protected marks
and primary Internet domain names,” and therefore registered and used the
domain name in bad faith).
The Panel finds that Complainant satisfied 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 <chuchill.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 24, 2007.
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