The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Ltd v. Accommodation.com
Claim Number: FA0606000736859
Complainants are The Royal Bank of Scotland plc, Direct Line Insurance plc, and Privilege Insurance Company Limited (collectively, “Complainant”), represented by William S. Fultz, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Accommodation.com (“Respondent”), PO Box 66, Kingsbridge, Devon TQ7 2XZ GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <privilige.com>, registered with Tucows 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 6, 2006.
On June 26, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <privilige.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 July 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@privilige.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <privilige.com> domain name is confusingly similar to Complainant’s PRIVILEGE INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <privilige.com> domain name.
3. Respondent registered and used the <privilige.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 a leading financial services group, which offers numerous financial goods and services, including a wide variety of insurance services through Complainant Direct Line Insurance plc and Complainant Privilege Insurance Company Limited. These three entities will be referred to collectively as “Complainant.” Complainant has registered the PRIVILEGE INSURANCE mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. E250,928, filed on April 26, 1996, issued March 12, 2004) and with the Office for Harmonization in the International Marker (“OHIM”) (Reg. No. 250,928, filed on April 26, 1995, issued January 30, 2003) Complainant uses the PRIVILEGE INSURANCE mark in connection with offering car, home, and breakdown insurance services. Complainant has registered the <privilege.com>, <privilege.co.uk> and <privilegeinsurance.com> domain names for use in connection with offering its insurance services to Internet users.
Respondent registered the <privilige.com> domain name on August 28, 2001. Respondent is using the disputed domain name to operate a website featuring links to third-party websites. Many of the links are to third-party websites offering insurance services in direct competition with Complainant, for example “car insurance quotes,” “low cost car insurance,” and “car insurance deals.” Other links are for third-party websites completely unrelated to Complainant’s business, for example “comet,” “currys,” and “Churchill.”
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 the PRIVILEGE INSURANCE mark through registration with the UKPO and OHIM. While Respondent registered the disputed domain name on August 28, 2001, before registration of Complainant’s mark was issued, Complainant had filed for registration of the mark with both authorities. The Panel finds that the effective date for determining the existence of rights in a mark that receives subsequent approval is the date of filing. Thus, Complainant’s rights in the mark were established before Respondent registered the disputed domain name. Complainant is headquartered in the United Kingdom and holds registration of the PRIVILEGE INSURANCE mark in the United Kingdom. According to Respondent’s WHOIS information, Respondent is located in Canada. The Panel finds that it is not necessary for Complainant to hold registration of a mark in the country in which Respondent is operating as long as Complainant holds a valid registration in some jurisdiction. Thus, the Panel finds that Complainant has established sufficient rights in the PRIVILEGE INSURANCE mark to meet the requirements of 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); 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).
Respondent’s <privilige.com> domain name is
confusingly similar to Complainant’s PRIVILEGE INSURANCE mark. The disputed domain name replaces the letter
“e” with the letter “i” mimicking a common misspelling or typo of Complainant’s
mark. The disputed domain name also
deletes the term “insurance” from Complainant’s mark. The Panel finds that changing one letter in Complainant’s mark,
and deleting one term from the mark, does not overcome the confusing similarity
between the disputed domain name and Complainant’s mark. See 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); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Am. Eagle Outfitters, Inc. v. Admin, FA
473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In the absence of a Response from Respondent, Complainant’s assertion goes unchallenged, and the Panel may view Respondent’s failure to respond as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests as discussed in Policy ¶ 4(c).
Respondent is using the <privilige.com> domain name to redirect Internet users to Respondent’s website featuring links to third-party websites both in direct competition with Complainant and unrelated to Complainant’s business. Presumably, Respondent receives pay-per-click referral fees when Internet users click on the third-party links on Respondent’s website. The Panel finds that such use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). See 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); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
There is no available evidence that Respondent is commonly
known by the <privilige.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Accommodation.com,” an identification with no clear relationship
to the disputed domain name.
Furthermore, Complainant asserts, without contradiction, that Respondent
is not sponsored by or affiliated with Complainant and that Complainant has not
authorized Respondent to use Complainant’s mark in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name and thus Respondent has not
established 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <privilige.com> domain
name to redirect Internet users to Respondent’s website featuring links to
third-party websites. Many of these
links feature websites offering insurance services in direct competition with
Complainant. Because Respondent’s
domain name is confusingly similar to Complainant’s PRIVILEGE INSURANCE mark,
differing by only one letter, customers seeking Complainant’s genuine website
can easily be redirected to Respondent’s website, and through Respondent’s
website to competing websites. The
Panel finds that such use disrupts Complainant’s business and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); 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).
Respondent’s <privilige.com>
domain name is confusingly similar to Complainant’s PRIVILEGE INSURANCE
mark. The disputed domain name differed
from Complainant’s mark by only one letter, and is thus almost identical to
Complainant’s legitimate website at the <privilege.com> domain name. This confusing similarity makes it likely
that Internet users seeking Complainant’s genuine website will mistakenly find
themselves at Respondent’s website instead, due to a simple misspelling or
typo. Once at Respondent’s website, Internet
users may mistakenly believe that Respondent’s website is affiliated or
sponsored by Complainant. Respondent is
presumably profiting from this confusion by receiving referral fees from the
links on its 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 financial benefit is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal
website is <century21.com>, many Internet users are likely to use search
engines to find Complainant’s website, only to be mislead to Respondent’s
website at the <century21realty.biz> domain name, which features links
for competing real estate websites.
Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.”); see
also 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).
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 <privilige.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 11, 2006
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