The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Whois Protection Service - ProtectFly.com c/o RegisterFly.com - Ref# 11914592
Claim Number: FA0604000686102
Complainants are The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited (collectively, “Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Whois Protection Service - ProtectFly.com c/o RegisterFly.com - Ref# 11914592 (“Respondent”), 230 Park Avenue, Suite 864, New York, NY 10169.
The domain name at issue is <privalege.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2006.
On April 24, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <privalege.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 April 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@privalege.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2006, 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." 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:
The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited (collectively, “Complainant”), are affiliated companies in the business of providing financial and insurance services.
Complainant offers insurance services under the PRIVILEGE mark.
Complainant has registered the PRIVILEGE mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,324,008 issued March 12, 2004).
Complainant also maintains an Internet presence in connection with its insurance services at the <privilege.com> and <privilege.co.uk> domain names.
Respondent registered the <privalege.com> domain name on May 10, 2004.
Internet users who access Respondent’s domain name are directed to a website featuring links to insurance services in competition with those of Complainant.
Respondent’s <privalege.com> domain name is confusingly similar to Complainant’s PRIVILEGE mark.
Respondent does not have any rights or legitimate interests in the <privalege.com> domain name.
Respondent registered and used the <privalege.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 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.
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:
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 has registered the PRIVILEGE mark with trademark authorities in the United Kingdom, and has, therefore, established rights in this mark pursuant to Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter, for purposes of paragraph 4(a)(i) of the Policy, whether a complainant’s mark is registered in a country other than that of a respondent’s place of business); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding a complainant has rights to a mark when it is registered in a country even if the complainant has never traded in that country).
Respondent’s <privalege.com> domain name incorporates the dominant features of Complainant’s PRIVILEGE mark, and merely substitutes ”a” for “i.” The substitution of one letter for another in Complainant’s mark does not distinguish the disputed domain name from the mark. See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003): “Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.” See also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it has rights or legitimate interests in the domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
The Panel finds that Complainant has presented a prima facie case, but will nonetheless consider whether the evidence on record demonstrates any rights or legitimate interests in Respondent under Policy ¶ 4(c).
It is undisputed that Respondent uses a domain name that is
confusingly similar to Complainant’s PRIVILEGE mark to redirect Internet users
to a website featuring links to other websites offering services in competition
with Complainant’s business. The Panel
infers that Respondent receives payment in exchange for directing users to
these other websites. Such use is not
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a
complainant’s mark 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 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).
Moreover, there is no evidence of record indicating that Respondent is affiliated with Complainant or that Respondent has ever been commonly known by the disputed domain name. The WHOIS database entry for <privalege.com> contains no information implying that Respondent is commonly known by this name. The Panel thus determines that Respondent has no rights or legitimate interests in this name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel presumes that Respondent receives click-through
fees in exchange for diverting Internet users to websites of Complainant’s
competitors. Because Respondent’s <privalege.com>
domain name is confusingly similar to Complainant’s PRIVILEGE mark, Internet
users may mistakenly believe that the resulting website is affiliated with
Complainant. Use of the disputed domain
name to take advantage of the existence of such confusion constitutes evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
See also 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.’
Moreover, Respondent’s substitution of a single letter in Complainant’s mark is a clear attempt to capitalize on a common typographical error, and may confuse Internet users about the relationship between Complainant and the contents of Respondent’s website. Use of a “typosquatted” version of Complainant’s mark is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting
… is the intentional misspelling of words with [the] intent to intercept and
siphon off traffic from its intended destination, by preying on Internauts who
make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.
See also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that a respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting, and, therefore, bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to websites offering links to competing services. Respondent’s domain name, incorporating, as it does, Complainant’s mark, may create confusion as to Complainant’s possible affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <privalege.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
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 <privalege.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 22, 2006
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