Churchill Insurance Co. Ltd.
v. Minton Edwards
Claim Number: FA1006001328594
PARTIES
Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is Minton Edwards (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchillimports.com>, registered
with GoDaddy.com,
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 4, 2010.
On June 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <churchillimports.com> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 9, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 29, 2010 by which Respondent could file a Response
to the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
postmaster@churchillimports.com. Also on June
9, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on June 29, 2010.
On July 2 , the Complainant filed an
Additional Submission. This Additional Submission was timely received and in
accordance with Supplemental Rule 7.
Respondent did not file an Additional Submission.
On July 8, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant considers the disputed domain name to
be identical or confusingly similar to the trademarks and service marks in
which it claims to have rights. Complainant further claims that Respondent has
no rights or legitimate interest in respect of the disputed domain name.
According to Complainant, Respondent has not used the domain name in connection
with a bona fide offering of services or a legitimate non-commercial
use. Also, Respondent has not been commonly known by the domain name, according
to Complainant.
Finally, Complainant considers that the domain name
was registered and being used in bad faith.
B. Respondent
Respondent claims to have been in the tobacco business for most of his
adult life and that he intends to use the domain name “churchillimports.com” to
sell cigars on line. Respondent claims to have acquired the domain name in good
faith.
C. Additional Submissions
1. Complainant
In its additional submission Complainant contends that Respondent was
unable to dispute that the domain name <churchillimports.com> is
confusingly similar to a trademark or service mark in which Complainant has
rights. Complainant further claims that Respondent failed to meet its burden of
establishing rights or legitimate interests in the domain name and that
Respondent provides no evidence to support its assertions. Finally, Complainant
contends that Respondent fails to refute Complainant’s assertions regarding
Respondent’s attempts to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant’s trademark or
service mark and that accordingly, Respondent registered and used the domain
name in bad faith.
2. Respondent
Respondent did not reply to Complainant’s Additional Submission
FINDINGS
Complainant, Churchill Insurance Co. Ltd., is
the holder of the following registered trademarks:
-
CHURCHILL,
registered with the United Kingdom Intellectual Property Office under number
2,042,931 on November 28, 1997 and applied for on October 30, 1995 for class 36
(insurance services; insurance brokerage and insurance underwriting; credit
card services; legal expenses insurance) and of which the renewal was published
on September 30, 2005;
-
CHURCHILL,
registered in the European Union under number 000822916 on June 17, 1999 and
applied for on May 6, 1998 for classes 9 (Computer software; computer programs;
magnetic recording media bearing computer programs, software and/or data), 36
(insurance services; insurance brokerage and insurance underwriting services;
credit card services; arranging and providing loans and mortgages; extended
warranty services; mortgage indemnity services; broking services), 37 (Motor
repair services; vehicle repair services; vehicle maintenance and cleaning
services; vehicle lubrication services; repair, Installation and maintenance
services, all for domestic and household purposes and for domestic and
household apparatus, equipment and Installations; arranging the provision of
all the aforesaid services; information and advisory services relating to all
aforesaid services) and 42 (Computer consultancy services; computer database
services; computer programming and computer software design services; will
writing services; legal services; legal assistance services; arranging the provision
of all the aforesaid services; Information and advisory services relating to
all the aforesaid services) and renewed on May 11, 2008.
Complainant uses these trademarks in the
insurance business.
Complainant is the holder of the domain name
<churchill.co.uk> and uses this domain name actively for its website.
Respondent is the holder of the domain name <churchillimports.com>
(registered January 11, 2010). Respondent uses the domain name as a landing
page with sponsored links, some of which relate to the insurance business.
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.
Complainant, Churchill Insurance Co. Ltd., is an insurance company based in the United Kingdom and claims it has provided various insurance services since it began operating in 1989. Complainant contends that it is part of The Royal Bank of Scotland Group plc (“RBS”), an international financial services provider. Complainant proves to have rights in the CHURCHILL mark through its trademark registrations of the mark with the United Kingdom Intellectual Property Office (“UKIPO”) ( 2,042,931 registered on November 28, 1997) and with the EU Office for Harmonization in the Internal Market (“OHIM”) (822,916 registered on June 17, 1999).
Prior panels have found rights in a mark based on its registration with a trademark authority. See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, this Panel finds Complainant’s registrations of the mark with the UKIPO and OHIM sufficiently establish its rights in the CHURCHILL mark.
As Complainant avers, the Panel is of the opinion that Respondent’s <churchillimports.com> domain name is confusingly similar to its CHURCHILL mark. The domain name registered by Respondent fully incorporates Complainant’s mark and then merely adds the generic term “imports” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The addition of the generic term “imports” is insufficient to distinguish Respondent’s disputed domain name from Complainant’s mark without the risk for confusion. Therefore, Respondent’s <churchillimports.com> domain name is confusingly similar to Complainant’s CHURCHILL mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to shift the burden of proof to the Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts it has not
licensed or otherwise authorized Respondent to use its CHURCHILL mark in a
domain name. Furthermore, the WHOIS
information lists “Minton Edwards” as the registrant of the <churchillimports.com>
domain name. Therefore, the
Panel finds that there are no indications that Respondent would be commonly
known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name);
see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
In its response, Respondent claims to have been in the tobacco business for most of his adult life and that he intended to use the domain name <churchillimports.com> to sell cigars online. However, Respondent provides no evidence to support these assertions. As a result, Respondent provides no evidence that would prove that he has rights or legitimate interests in the domain name.
Moreover, Respondent uses the <churchillimports.com> domain name to resolve to a directory website that displays links to third-party websites, some of which provide insurance products and services that compete with Complainant’s business. This is shown by a screen shot of Respondent’s website from June 4, 2010 that shows a parked website with links entitled “Nationwide Auto Insurance,” “Progressive Insurance,” and “GEICO Car Insurance.” It is shown on a balance of probability that Respondent receives “click-through” fees from this use. According to the Panel such use is not 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant shows that Respondent uses its confusingly similar domain name to divert Internet users interested in Complainant’s goods and services to Respondent’s website and, subsequently, to Complainant’s competitors. As alleged by Complainant, this use threatens to disrupt its business by causing Complainant to suffer loss of customers, business, and revenue. According to the Panel, this is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further alleges Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, it is shown on a balance of probability that Respondent uses the disputed domain name to operate a directory website and, thus, profits from this use through the receipt of “click-through” fees. Accordingly, the Panel finds that this use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Furthermore, as the disputed domain name was registered after the
registration of Complainant’s established trademark rights and given the fact
that Respondent’s website employs insurance themed links that resolve to
websites of Complainant’s competitors, Respondent could not have registered and
used the disputed domain name without actual or constructive knowledge of
Complainant and its rights in the CHURCHILL mark. While constructive notice has not been
generally held to suffice in itself for a finding of bad faith registration and
use, the circumstances of the registration and use only corroborate a finding
of bad faith registration and use under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v.
Jamruke, LLC, FA
648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere
constructive knowledge is insufficient to support a finding of bad faith, where
the circumstances indicate that the respondent had actual knowledge of the
complainant’s mark when it registered the domain name, panels can find bad
faith); see also Yahoo! Inc. v. Butler,
FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where
the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of
registration).
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 <churchillimports.com> domain name be
TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: July 23, 2010
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