Direct Line Insurance plc v. John Harold
Claim Number: FA0704000972332
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
NAME
The domain name at issue is <directlineadvisors.com>, registered with Go Daddy Software, Inc.
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 April 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2007.
On April 27, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <directlineadvisors.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 29, 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@directlineadvisors.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directlineadvisors.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark.
2. Respondent does not have any rights or legitimate interests in the <directlineadvisors.com> domain name.
3. Respondent registered and used the <directlineadvisors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Direct Line Insurance plc, holds several trademark registrations with the United Kingdom Intellectual Property Office (“UK-IPO”) for the DIRECT LINE mark (i.e., Reg. No. 1,392,349 issued March 18, 1994 and Reg. No. 1,528,733 issued November 22, 1996). Complainant also holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) and the European Union’s Office for Harmonization of the Internal Market (“OHIM”) for the DIRECT LINE mark (Reg. No. 2,518,906 issued December 18, 2001 and Reg. No. 2,214,575 issued February 8, 2002, respectively). Complainant has used the DIRECT LINE mark in connection with the sale of personal finance services and goods, including loans, mortgages, insurances and savings products. Since 1984, Complainant has acquired over ten million customers associated with the sale of products and services under the DIRECT LINE mark. Complainant has registered the <directline.com> domain name, which it uses in connection with the sale of its personal finance services and goods providing over 17,000 quotes online daily with more than one million visitors to the website per month.
Respondent registered the <directlineadvisors.com> domain name on July 6, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to third-party websites offering goods and services in competition with those offered by Complainant under the DIRECT LINE mark.
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 established rights in the DIRECT LINE mark
pursuant to Policy ¶ 4(a)(i) through registration of
the mark with the UK-IPO, the USPTO, and the OHIM. See 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);
see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <directlineadvisors.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark as it incorporates the mark in its entirety and simply adds the generic word “advisors” and the generic top-level domain (“gTLD”) “.com” to it. The panel in The Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005), held that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that the addition here of the generic word “advisors” and the gTLD “.com” does not sufficiently distinguish the disputed domain name from the mark and, thus, is confusingly similar pursuant to Policy ¶ 4(a)(i). See 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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <directlineadvisors.com> domain name. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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”).
The Panel assumes Respondent has no rights or legitimate
interests here because Respondent failed to respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it
is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Bank of Am. Corp. v. McCall, FA 135012
(Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.”). However, the Panel will
consider all evidence before determining whether Respondent has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent
is using the <directlineadvisors.com>
domain name to redirect Internet users to Respondent’s website, which displays
links to third-party websites offering goods and services that compete with
Complainant. Respondent’s use of the
domain name to display links to competing websites is not a use in connection
with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
Finally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <directlineadvisors.com> domain name. Respondent’s WHOIS information identifies Respondent as “John Harold.” Therefore, Respondent has failed to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <directlineadvisors.com> domain name, which is confusingly similar to Complainant’s DIRECT LINE mark, to redirect Internet users to Respondent’s website displaying links to third-party websites in competition with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith under Policy ¶ 4(b)(iii). See 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)….”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Additionally, Respondent is using the <directlineadvisors.com> domain name to redirect Internet users to third-party websites for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s DIRECT LINE mark, Internet users may become confused as to Complainant’s affiliation with Respondent’s website. Presumably, Respondent is profiting from this confusion through click-through-fees. As such, Respondent’s use of the <directlineadvisors.com> domain name to redirect Internet users to third-party websites in competition with Complainant for the profit of Respondent constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 <directlineadvisors.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 13, 2007
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