Churchill Insurance Co. Ltd. v. Russell Craven
Claim Number: FA1102001371619
Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Russell Craven (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchillsolutions.com>, registered with GoDaddy.com, Inc.
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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2011; the National Arbitration Forum received payment on February 7, 2011.
On February 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <churchillsolutions.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2011 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@churchillsolutions.com. Also on February 11, 2011, 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 March 3, 2011.
Respondent sent an additional response dated March 2, 2011, received March 8, 2011.
On March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an insurance company based in the United Kingdom and has been in business since 1989. Complainant submits evidence to show it owns trademark registrations for its CHURCHILL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,042,931 issued November 28, 1997) and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 822,916 issued June 17, 1999).
Complainant argues that the <churchillsolutions.com> domain name is confusingly similar to its CHURCHILL mark. Complainant notes that the domain name contains the CHURCHILL mark entirely while adding the generic term “solutions” and the generic top-level domain (“gTLD”) “.com.”
Complainant contends that there is no indication that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant notes that the domain name was registered under the name “Russell Craven,” which Complainant argues is not related to the domain name.
Complainant argues that Respondent is using the disputed domain name to direct Internet users to a website that displays various commercial hyperlinks, including links to companies that are in competition with Complainant. Complainant alleges that Respondent’s website provides links entitled “Car Insurance Quotes,” and “Confused Car Insurance” which are similar to services Complainant offers. Complainant contends that when Internet users click the displayed heading words, they are directed to the websites of companies offering services in competition with Complainant. Thus, Complainant contends that Respondent is capitalizing on its use of the CHURCHILL mark for Respondent’s commercial gain.
Complainant argues that Respondent is using the disputed domain name to steer Internet users who are seeking Complainant’s products and services to the websites of Complainant’s competitors. Complainant alleges that such use threatens to disrupt Complainant’s business by causing Complainant to lose customers and potential customers, which is evidence of bad faith registration and use of the domain name.
Further, Complainant argues that Policy ¶ 4(b)(iv) provides that the use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrants website for commercial gain is evidence of bad faith. Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to Complainant’s competitors for commercial gain through the use of pay-per-click links.
Complainant also contends that 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.
B. Respondent
Respondent’s initial response includes an unsigned document that says:
I am the President of Churchill Solutions, Inc. Churchill Solutions, Inc. is a Florida Corporation since 1990.
I would like to keep my domain name.
Sincerely
Russell R Craven
Respondent’s additional material includes another copy of the initial response with “1990” struck out in handwriting and “1997 correction” and the initials “RC” handwritten on the document. The additional material also includes an unsigned document dated January 3, 1997 purporting to be addressed by the Florida Department of State, Secretary of State to Amerilawyer at 343 Almeria Avenue, Coral Gables, FL.
The Panel finds:
1. Complainant has rights in the CHURCHILL MARK.
2. The disputed domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights or legitimate interests in the disputed domain name.
4. Respondent registered and is using the disputed domain name 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."
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 submitted sufficient evidence to establish rights in its CHURCHILL mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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). There is ample evidence in this case that Complainant has rights in the CHURCHILL mark.
The disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s CHURCHILL MARK along with the generic word “solutions”. 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)).
There is nothing before the Panel to establish that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Based upon the WHOIS registrant information, Respondent is Russell Craven. Respondent submitted an unsigned statement saying he is President of Churchill Solutions, Inc., but there is no evidence whatsoever to support that assertion. 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
The Panel finds that the Complainant has made out a prima facie case.
Respondent’s use of the disputed domain name as a links directory website that displays various third-party links to competing companies 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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).
The burden shifts to the Respondent. Respondent’s material does not provide sufficient information for Respondent to meet the burden. Respondent’s initial response includes an unsigned document that says:
I am the President of Churchill Solutions, Inc. Churchill Solutions, Inc. is a Florida Corporation since 1990.
I would like to keep my domain name.
Sincerely
Russell R Craven
The Respondent’s additional material includes another copy of the initial response with “1990” struck out in handwriting and “1997 correction” and the initials “RC” handwritten on the document. The additional material also includes an unsigned document dated January 3, 1997 purporting to be addressed by the Florida Department of State, Secretary of State to Amerilawyer at 343 Almeria Avenue, Coral Gables, FL. This document says the Articles of Incorporation for Churchill Solutions Inc. were filed on January 3, 1997. This information is not sufficient to establish any connection between Respondent, Craven, and the purported corporation, Churchill Solutions, Inc.. This information is also not sufficient to establish that Churchill Solutions, Inc. is a legitimate business or what sort of business it carries on.
Respondent has not met the burden to show rights or legitimate interests. Complainant succeeds on this element.
The Panel agrees with Complainant and finds that Respondent’s use of the disputed domain name to display various third-party links to competing companies is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See 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)); 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 the complainant’s business).
The Panel also finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the inference to be drawn from the material before the Panel is that Respondent is using the disputed domain name to attract Internet traffic, for commercial gain, to Respondent’s web site where competing services are offered. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <churchillsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: March 14, 2011
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