The Royal Bank of Scotland Group plc, Direct Line Insurance plc, & Privilege Insurance Company Limited v. Vin Zoni
Claim Number: FA0606000731760
Complainant is The Royal Bank of Scotland Group plc, Direct Line Insurance plc, & Privilege Insurance Company Limited (Collectively, “Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., PO Box 389, Raleigh, NC 27602. Respondent is Vin Zoni (“Respondent”), Business Center Bach, Bachstrasse 1, Butschwil CH-9606, CH.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <privalige.com>, registered with Moniker Online Services, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2006.
On June 23, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <privalige.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 2006 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@privalige.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <privalige.com> domain name is confusingly similar to Complainant’s PRIVILEGE mark.
2. Respondent does not have any rights or legitimate interests in the <privalige.com> domain name.
3. Respondent registered and used the <privalige.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, Direct
Line Insurance plc, and Privilege Insurance Company Limited, together offer a
variety of financial services, including insurance under the PRIVILEGE
mark. Complainant is one of the world’s
leading financial service groups with offices in numerous countries worldwide
and more than 140,000 employees.
Complainant holds several trademark registrations for its PRIVILEGE
mark, including one with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,324,008
issued March 12, 2004). Additionally,
Complainant operates several websites that utilize the PRIVILEGE mark,
including <privilege.com>, <privilege.co.uk> and
<privilegeinsurance.com>.
Respondent registered the <privalige.com> domain name on November 3, 2005. Respondent’s disputed domain name resolves to a website that displays links to third-party websites that are in direct competition with Complainant.
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.
The Panel finds that Complainant’s trademark registration with the UKPO sufficiently establishes Complainant’s rights in the PRIVILEGE mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <privalige.com> domain name is confusingly similar to Complainant’s PRIVILEGE mark as the disputed domain name is a misspelled version of Complainant’s mark. In Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000), the panel found that the domain names <beanybaby.com>, <beaniesbabies.com> and <beanybabies.com> were confusingly similar to the complainant’s BEANIE BABIES mark. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar). The Panel therefore finds that the substitution of an “a” for an “i” and an “i” for an “e” in Complainant’s mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Respondent has alleged that Respondent lacks rights or legitimate interests in the <privalige.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <privalige.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s PRIVILEGE mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name, and there is no evidence in the record to
suggest that Respondent is or has ever been known by the disputed domain
name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), the panel found the respondent had no rights or legitimate interests
where the respondent was not commonly known by the mark and had never applied
for a license or permission from the complainant to use the trademarked
name. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Absent evidence of Respondent being known by the disputed domain name
prior to the filing of the instant complaint, the Panel finds that Respondent
is not commonly known by the disputed domain names under Policy ¶
4(c)(ii).
Respondent is using the disputed domain name to divert Internet users attempting to locate Complainant’s website to a website that offers links to competing goods and services to those offered by Complainant, presumably for the commercial benefit of Respondent. The Panel finds that such diversion 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). 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 Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains a misspelled
version of Complainant’s mark. Respondent is using the <privalige.com>
domain name to redirect Internet users to a website that features links to
goods and services that compete with Complainant. The Panel finds that such use constitutes a disruption of
Complainant’s business and is evidence of bad faith registration and use 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) [and] (iv).”); 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).
Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for the links displayed on the website that resolves from
the disputed domain name. Such
commercial benefit constitutes bad faith registration and use under Policy ¶
4(b)(iv). The Panel additionally finds
that Respondent’s disputed domain name is likely to create confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name, which
is further evidence of bad faith registration and use. See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv));
see also Identigene, Inc.
v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
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 <privalige.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 1, 2006
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