The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Virtual Sky
Claim Number: FA0605000715060
Complainant is 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 Virtual Sky (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <priviledge.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.
On May 31, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <priviledge.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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 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@priviledge.com by e-mail.
On June 20, 2006 Respondent filed a Request for Extension of Time to Respond to Complaint with Complainant’s Consent. The Request was granted on June 21, 2006 and Respondent’s time to respond was extended an additional fourteen days, from June 28, 2006 to July 12, 2006, pursuant to NAF Supp. Rule 6.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <priviledge.com> domain name is confusingly similar to Complainant’s PRIVILEGE mark.
2. Respondent does not have any rights or legitimate interests in the <priviledge.com> domain name.
3. Respondent registered and used the <priviledge.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is the parent organization under which operate Complainant, Direct Line Insurance plc, and Complainant, Privilege Insurance Company Limited. These entities shall be referred to collectively as “Complainant.” Complainant is a financial services group providing consumer and commercial lending, credit card services, investment and advisory services, real estate services and insurance services. Complainant has registered its PRIVILEGE mark with the United Kingdom Patent Organization (“UKPO”) (Reg. No. 2,324,008 issued on March 12, 2004) and with the Office for Harmonization in the International Market (“OHIM”) (Reg. No. 250,928 issued January 30, 2003). Complainant uses its PRIVILEGE mark in connection with offering home and car insurance goods and services. Complainant has registered the <privilege.com>, <privilege.co.uk>, <privilegeinsurance.com> domain names in order to operate websites providing Internet users with information about, and opportunities to purchase, Complainant’s insurance goods and services.
Respondent registered the <priviledge.com> domain name September 13, 2003. Respondent is using the disputed domain name to redirect Internet users to its website featuring links to and advertisements for third-party websites offering insurance goods and services in direct competition with Complainant. Respondent’s website also features links to third-party websites wholly unrelated to Complainant, including links to “entertainment,” “travel,” and “lifestyle.”
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.
Complainant has established rights in its PRIVILEGE mark through registration of the mark with the UKPO and the OHIM. While Complainant does not have a registration of its mark with an authority in the United States, Respondent’s location, the fact that Complainant holds registrations of the PRIVILEGE mark with other governmental authorities is sufficient to establish rights in Complainant pursuant to Policy ¶ 4(a)(i). 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 <priviledge.com> mark is
confusingly similar to Complainant’s PRIVILEGE mark. Respondent’s domain name is a common misspelling or typo of
Complainant’s mark, adding the letter “d.”
The Panel finds that the addition of a letter to Complainant’s mark does
not overcome the confusing similarity between the disputed domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb.
Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to
words, a respondent does not create a distinct mark but nevertheless renders
the domain name confusingly similar to the complainant’s marks); see also
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <priviledge.com> domain name. Complainant’s assertion constitutes a prima facie case, shifting the burden to Respondent to demonstrate that Respondent does have rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will review the available evidence to determine whether Respondent has rights or legitimate interests in the <priviledge.com> domain name pursuant to Policy ¶ 4(c).
Respondent is using the <priviledge.com> domain
name to redirect Internet users to Respondent’s website comprised of
advertisements for Complainant’s competitors, links to third-party websites
offering for sale goods and services in competition with Complainant and links
to third-party websites unrelated to Complainant. The Panel finds that such use is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep.
26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to
Complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business 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).”).
There is no available evidence
that Respondent is commonly known by the <priviledge.com> domain
name. Respondent originally shielded
its WHOIS information, registering under Moniker Privacy Services. However, Respondent’s actual WHOIS
identifying information identifies Respondent as “Virtual Sky,” which has no
apparent relationship to the disputed domain name. Further, Complainant asserts that Respondent is in no way related
to Complainant, and lacks permission from Complainant to use Complainant’s
PRIVILEGE mark, or any derivation thereof, in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name and thus lacks rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See 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); see also MRA
Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting
that “the disputed domain name does not even correctly spell a cognizable
phrase” in finding that the respondent was not “commonly known by” the name
“girls gon wild” or <girlsgonwild.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <priviledge.com> domain
name to redirect Internet users to Respondent’s website featuring both
advertisements for competing insurance companies and links to third-party
websites offering insurance goods and services in direct competition with
Complainant. The Panel finds that using
a confusingly similar domain name to redirect potential customers away from
Complainant and towards Complainant’s competitors through links on Respondent’s
website is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Toyota Jidosha Kabushiki Kaisha v. S&S
Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain
name [by the respondent that incorporates another’s trademark] goes further
than merely correctly using in an advertisement the trade mark of another in
connection with that other’s goods or services.”); see also 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).”).
Respondent’s <priviledge.com>
domain name is confusingly similar to Complainant’s PRIVILEGE mark. Internet users seeking Complainant’s goods
and services could easily find themselves redirected to Respondent’s website
through a simple typo or misspelling.
Because of the confusing similarity between the disputed domain name and
Complainant’s mark Internet users might mistakenly believe that Respondent’s
website is sponsored by or affiliated with Complainant. Respondent is presumably capitalizing on
this confusion by receiving click-through fees from the advertisements and
links to third-party websites on Respondent’s website. The Panel finds that Respondent’s use of a
confusingly similar domain name to attract Internet users to Respondent’s
website for Respondent’s benefit is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
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 <priviledge.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 31, 2006
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