Churchill Insurance Co. Ltd. v. James Sutherland
Claim Number: FA1006001328073
Complainant is Churchill
Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <churchilllendinggroup.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2010.
On June 3, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <churchilllendinggroup.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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@churchilllendinggroup.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant is a United Kingdom-based insurance company that provides various insurance services, including home, car, travel, pet, and motorcycle insurance.
Complainant owns trademark registrations for its CHURCHILL mark, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,042,931, issued November 28, 1997) and the European Union Office for Harmonization of the Internal Market (“OHIM”) (Reg. No. 822,916, issued June 17, 1999).
Complainant has not authorized Respondent’s use of its CHURCHILL trademark for any purpose.
Respondent registered the disputed <churchilllendinggroup.com> domain name on December 8, 2009.
The disputed domain name resolves to a website displaying presumably pay-per-click commercial links to services similar to and in competition with Complainant’s insurance services business.
Respondent’s <churchilllendinggroup.com> domain name is confusingly similar to Complainant’s CHURCHILL mark.
Respondent is not commonly known by the contested <churchilllendinggroup.com> domain name.
Respondent does not have any rights or legitimate interests in the domain name <churchilllendinggroup.com>.
Respondent both registered and uses the contested <churchilllendinggroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registrations for its CHURCHILL mark are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even when the mark is registered outside the country of Respondent’s residence or business operations. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, it being sufficient that the complainant can establish rights in the mark in some jurisdiction).
Respondent’s <churchilllendinggroup.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates Complainant’s complete mark, combined with the descriptive phrase “lending group” and the generic top-level domain (“gTLD”) “.com.” The alteration of Complainant’s mark with the addition of a phrase comprised of terms descriptive of Complainant’s business fails to create a distinct domain name that avoids confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that a respondent’s domain names, which incorporated a 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).
Similarly, the attachment of a gTLD to a competing mark in forming a domain name is irrelevant to a determination of confusing similarity pursuant to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel thus finds that Respondent’s <churchilllendinggroup.com> domain name is confusingly similar to Complainant’s CHURCHILL mark according to Policy ¶ 4(a)(i).
Complainant bears the initial burden of presenting a prima facie case under Policy ¶ 4(a)(ii). Once Complainant has done so, the burden transfers to Respondent to
demonstrate its rights to or legitimate interests in the disputed domain name.
See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a
complainant asserts that a respondent has no rights or legitimate interests
with respect to a domain, the burden shifts to that respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent.
Moreover, Respondent’s failure to respond to the allegations of the Complaint filed in this proceeding permits us to presume that it has no rights to or legitimate interests in the contested domain. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy); 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.
Nevertheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <churchilllendinggroup.com> domain name and that Complainant has not authorized Respondent’s use of its CHURCHILL trademark for any purpose. Moreover, the WHOIS information for the disputed domain name lists the registrant only as “james sutherland,” which bears no resemblance to the disputed domain name. On this record, we must conclude that Respondent has failed to demonstrate that it is commonly known by the disputed domain name so as to show that it has rights to or legitimate interests in the domain as provided in Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the competing mark).
Complainant also argues, without objection from Respondent, that the contested <churchilllendinggroup.com> domain name is being used to redirect Internet users to a host site for pay-per-click links to both competing providers of insurance services. In the circumstances here presented, Respondent’s behavior does not fulfill the bona fide offering of goods or services or legitimate noncommercial or fair use requirements of Policy ¶¶ 4(c)(i) or 4(c)(iii) and therefore fails to show that Respondent has rights to or legitimate interests in the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate non-commercial or fair use, regardless of whether the links resolve to competing or unrelated websites or if a respondent is itself profiting commercially from click-through fees).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the <churchilllendinggroup.com> domain name features links to the websites of enterprises operating in competition with the business of Complainant. Respondent is thus using the disputed domain name to divert Internet users seeking Complainant to competitors’ websites, which disrupts Complainant’s business. Respondent’s disruption of Complainant’s business in the manner alleged evidences bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant’s business competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
The website resolving from Respondent’s <churchilllendinggroup.com>
presumably produces pay-per-click revenues for Respondent. Respondent is therefore appropriating
Complainant’s mark for commercial gain by attract Internet users to its
resolving site and creating confusion as to a possible relationship between
Respondent and Complainant. This demonstrates
bad faith registration and use of the subject domain name under Policy ¶ 4(b)(iv). See
Respondent
is using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <churchilllendinggroup.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 13, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum