1st Sep 2009
National Arbitration Forum
Churchill Insurance Co. Ltd. v. Churchhill Financial Services, Ltd.
Claim Number: FA0906001270466
Complainant is Churchill Insurance Co. Ltd. (“Complainant”), represented by James A. Thomas, North Carolina, USA.Respondent is Churchhill Financial Services, Ltd. (“Respondent”), represented by Ari Goldberger, of ESQwire.com P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <churchhill.com>, registered with Signature.
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.
Carolyn Marks Johnson and The Honourable Neil Anthony Brown QC as Panelists and Bruce E. O’Connor as Chair.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2009.
On June 25, 2009, Signature confirmed by e-mail to the National Arbitration Forum that the <churchhill.com> domain name is registered with Signature and that the Respondent is the current registrant of the name.Signature has verified that Respondent is bound by the Signature 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 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 2009 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 firstname.lastname@example.org by e-mail.
On July 22, 2009, the National Arbitration Forum granted Respondent’s July 20, 2009 Request for Extension of Time to Respond to Complaint with Complainant’s Consent, thereby setting a deadline of July 31, 2009 by which Respondent could file a Response to the Complaint.
A Response was received on August 3, 2009, which was subsequent to the Response deadline.The National Arbitration Forum therefore does not consider the Response to be in compliance with Rule 5.
The National Arbitration Forum received Complainant’s Additional Submission on August 11, 2009 and determined that it was timely and complete pursuant to Supplemental Rule 7.
The National Arbitration Forum received Respondent’s Additional Submission on August 17, 2009 and determined that it was timely and complete pursuant to Supplemental Rule 7.
On August 18, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carolyn Marks Johnson and Neil Anthony Brown as Panelists and Bruce E. O’Connor as Chair.
The National Arbitration Forum received Complainant’s Supplemental Additional Submission on August 18, 2009 and determined that it was deficient pursuant to Supplemental Rule 7.
Complainant requests that the Domain Name at issue be transferred from Respondent to Complainant.
The trademark is “CHURCHILL” (the “Mark”).Complainant is an insurance company based in the United Kingdom and has been in business since 1989.Complainant provides various insurance services, including, home insurance, car insurance, travel insurance, pet insurance and motorcycle insurance throughout the United Kingdom.Complainant is part of The Royal Bank of Scotland Group plc (“RBS”), one of the leading financial services providers in the world.With offices in numerous countries on six continents, and more than 140,000 employees, RBS offers a wide range of financial products and services, including consumer, commercial lending and insurance services.
Complainant holds numerous trademark registrations for its “CHURCHILL” mark, including registrations in the United Kingdom Intellectual Property Office (“UKIPO”) since 1997 and the EU Office for Harmonization in the Internal Market (“OHIM”) since 1998.Complainant uses the “CHURCHILL” mark in promoting and providing insurance services and products throughout the United Kingdom.
In connection with the promotion and operation of its business, Complainant, both on its own and through its parent entity RBS, owns the domain names <churchill.com> (created September 1994) and <churchill.co.uk> (created August 1996), both of which resolve to Complainant’s official website.
As the foregoing indicates, and by virtue of its longstanding role in the insurance market, its deep commitment to the provision of quality insurance products and services, and its significant commitment to the marketing and advertising of its “CHURCHILL” mark, Complainant has built up substantial goodwill in and rights to this mark.
Furthermore, Complainant’s rights in its “CHURCHILL” mark have been recognized in numerous proceedings before the National Arbitration Forum. See, e.g., Churchill Ins. Co. Ltd. v. Charlton, FA 912281 (Nat. Arb. Forum Mar. 12, 2007) (“As Complainant holds trademark registrations for the CHURCHILL mark with the UKPO and OHIM, Complainant has sufficiently demonstrated its rights in the mark for purposes of Policy ¶ 4(a)(i)”); The Royal Bank of Scot. Group plc, et al v. Domaincar c/o Perthshire Marketing aka Domaincar, FA 671079 (Nat. Arb. Forum May 30, 2006) (finding that complainant Churchill demonstrated rights in the “CHURCHILL” mark by virtue of its registration of the mark with the UKIPO).
The Domain Name is confusingly similar to Complainant’s Mark because it fully incorporates Complainant’s Mark, and merely adds an additional letter, “h,” followed by the top-level domain name extension, “.com,” which does not make the Domain Name distinct. Complainant’s Mark is the dominant and distinctive element of the Domain Name, and the Domain Name strongly conveys the impression of sponsorship by or association with Complainant.Therefore, the Domain Name is confusingly similar to Complainant’s Mark.
Further, the intentional misspelling of a mark (by the substitution, addition or subtraction of a letter) is generally known as “typosquatting,” which is “designed to catch Internet users who inadvertently make a typographical error…when trying to type a domain name.”Typosquatting does not negate the confusingly similar aspects of a domain name pursuant to Policy ¶ 4(a)(i).In fact, a previous NAF Panelist reached this conclusion in ordering transfer of the domain name <churchhill.info>, which is nearly identical to the present disputed Domain Name <churchhill.com>, under highly similar circumstances to the present matter in that both matters involve a typosquatted domain name that resolves to commercial links to third party websites, to the detriment of Complainant.In Churchill Ins. Co. Ltd. v. WhoisGuard c/o WhoisGuard Protected, the Panelist found the disputed domain name <churchhill.info> confusingly similar to Complainant’s mark “CHURCHILL,” because “the disputed domain name is a common misspelling of the Complainant’s mark, arrived at by adding the letter “h” to Complainant’s protected mark.Such a practice is typically referred to as ‘typosquatting.’”FA 912323 (Nat. Arb. Forum Mar. 21, 2007).Accordingly, the Panelist concluded that the domain name <churchhill.info> was confusingly similar to the Complainant’s “CHURCHILL” mark.In the present case, Respondent’s Domain Name also merely adds an “h” to Complainant’s mark “CHURCHILL.”Like the <churchhill.info> case, Respondent’s misspelling of Complainant’s Mark constitutes typosquatting, rendering the Domain Name confusingly similar to Complainant’s Mark.
Respondent’s misspelling of Complainant’s Mark within the Domain Name therefore does not negate the confusing similarity of the Domain Name to Complainant’s Mark under Policy ¶ 4(a)(i), nor does the addition of the generic top-level domain <.com> distinguish the Domain Name.See WorldPay Ltd. v. Jones, FA 1169388 (Nat. Arb. Forum May 8, 2008) (holding that the inclusion of a generic top-level domain name extension within a disputed domain name is “irrelevant in distinguishing the disputed domain name from Complainant’s mark because all domain names require a top-level domain”).
Additionally, Respondent’s use of the confusingly similar Domain Name to redirect Internet users to a directory site with links to insurance products and services similar to Complainant’s products and services further increases the likelihood of confusion.Respondent is using the Domain Name to display links to various financial and insurance products and services, including the same types of products and services offered by Complainant under its mark.
Respondent has no right to or legitimate interest in the Domain Name.Complainant has not licensed or otherwise authorized Respondent to use Complainant’s “CHURCHILL” mark, or any variation thereof, in the Domain Name or otherwise.
There is no indication that Respondent is commonly known by the name “churchhill” or the Domain Name.On June 24, 2009, when Complainant initially filed the complaint with the NAF and forwarded a copy of the complaint to the registrant, the WHOIS information for the Domain Name displayed the registrant’s name as “Churchill Financial Services, Ltd.” with an address of P.O. Box No 10733, Grand Cayman, Cayman Islands KY1-1007, KY.In fact, Complainant had previously sent a cease and desist letter on March 12, 2009, to “Churchill Financial Services, Ltd.,” based on the registrant identification in the WHOIS information at that time.In the letter, Complainant requested that Respondent transfer ownership of the Domain Name based upon its registration and use in violation of the UDRP.Complainant then received an email communication on April 9, 2009, from Respondent’s Representative, stating that he represented the registrant, at which time the WHOIS information continued to identify the registrant as “Churchill Financial Services, Ltd.”On June 26, 2009, however, during the course of the NAF’s processing of the complaint, the NAF requested that Complainant amend its complaint against “Churchill Financial Services, Ltd.” to reflect the registrant listed in the WHOIS information as of that date.Upon accessing the WHOIS information on June 26, 2009, Complainant observed that the first word in the registrant field of the WHOIS information had been changed so that it would appear as “Churchhill,” mirroring the Domain Name identically, rather than “Churchill,” as it had appeared prior to this date.In fact, the WHOIS information now reflects that it was “last updated” on June 25, 2009.Previously, the WHOIS information indicated that it had last been updated on September 19, 2008.Thus, whether or not Respondent had received a copy of the complaint on June 25, 2009, it is apparent that the registrant identification in the WHOIS information was changed at a time when Respondent had notice of Complainant’s claims regarding the Domain Name, given that receipt of the cease and desist letter had been acknowledged in April, 2009.Respondent therefore will have no basis on which to claim that the recently modified WHOIS information supports any assertion that Respondent is commonly known by the Domain Name.
Moreover, regardless of this change in the WHOIS information, Complainant has not found any indication that Respondent is commonly known as the Domain Name or either of the names “Churchhill” or “Churchill.”Indeed, an Internet search did not reveal any entity named either “Churchill Financial Services, Ltd.” or “Churchhill Financial Services Ltd.” to be located at the address listed in the WHOIS information.Nor did a business name search of either the Cayman Islands Chamber of Commerce Website or the Internet business directory website <caymanislandsyp.com> reveal any listings for an entity by the name of either “Churchill Financial Services Ltd.” or “Churchhill Financial Services Ltd.” In fact, there is no evidence showing any association between Respondent and the Domain Name, and the mere presence of the name “Churchhill Financial Services, Ltd.” within the WHOIS information is insufficient to support a finding that Respondent is commonly known by the Domain Name.
Further, Respondent’s use of the Domain Name to misdirect Internet users to a directory website featuring various commercial links, including links to the very types of services offered by Complainant under its Mark, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under ICANN Policy.For example, as of March 12, 2009, Respondent’s website provided links entitled “Go Compare Car Insurance” and “Cheapest Car Insurance,” in direct correlation to Complainant’s insurance coverage services.By clicking these links, Internet users were redirected to further links for third-party goods and services.Thus, it appears that Respondent attempted to capitalize on Complainant’s well-known mark by attracting Internet users, including Complainant’s current and prospective customers, to its website and redirecting them to Complainant’s competitors, presumably in exchange for “click-through” fees.
Respondent’s “typosquatting” use of the Domain Name constitutes evidence that Respondent lacks rights and legitimate interests in the Domain Name.By registering and using the Domain Name, which consists of a misspelling of Complainant’s Mark, Respondent appears to be targeting Internet users who are attempting to access Complainant’s site, but mistakenly misspell Complainant’s Mark by typing an extra “h.”Respondent is therefore taking advantage of these users’ common mistakes to redirect them to Respondent’s own website.
The Mark is a registered trademark and well known in the United Kingdom and Europe.In fact, Complainant’s mark has been registered in the United Kingdom for more than eleven (11) years and the European Union for more than nine (9) years.Based on the fame of the Mark, the fact that Respondent chose a Domain Name which fully incorporates the Mark and the fact that Respondent is using the Domain Name to redirect Internet users to a link site containing links to Complainant’s competitors, it is clear that Respondent had knowledge of the Mark and is attempting to take advantage of Complainant’s goodwill.Since Respondent had actual and/or constructive knowledge of Complainant’s Mark, Respondent’s registration and continued holding of the Domain Name was and is in bad faith.
Respondent has used Complainant’s Mark to attract to its websites Internet users interested in Complainant’s goods and services, including Complainant’s current and prospective customers, and then steer those users to the websites of Complainant’s competitors.Such use of the Domain Name threatens to disrupt Complainant’s business by causing Complainant to suffer loss of customers, business and revenue and is therefore evidence of bad faith registration and use.
In support of these contentions, Complainant offers citations of authority, WHOIS registration pages, copies of pages from its web site, trademark registration information from UKIPO and OHIM, a page from Respondent’s web site dated March 12, 2009, a Google search, pages from the Cayman Islands Chamber of Commerce Web site, and pages from caymanisladsyp.com.
Respondent registered the Disputed Domain because it incorporates the term "church hill."Respondent selected the domain because it incorporates a common term.Respondent's registration of the Disputed Domain had nothing to do with Complainant's trademark.Respondent had no knowledge of Complainant, its web site, its business name or trademark when it registered the Disputed Domain.Respondent did not register the Disputed Domain with the intent to sell to Complainant, to disrupt Complainant's business, or to confuse consumers seeking to find Complainant’s web site.Respondent did not register the Disputed Domain to prevent Complainant from owning a domain name incorporating its trademark.
Respondent uses the Disputed Domain to display finance-related sponsored
search results provided by DomainSponsor.com for which it receives a share of the revenue earned by DomainSponsor.com from the pay-per-click ads. The links are autogenerated by DomainSponsor.com and Respondent did not select them.When Respondent learned that some auto insurance links had appeared on the web site, Respondent contacted Domain Sponsor to insure those links would no longer appear, and they were removed.
Respondent had the links removed prior to initiation of these proceedings.
The term "church hill" is subject to substantial third party use. An advanced Google
search for "church hill," yielded 1.24 million third party results. Examples of third party uses include: Church Hill, TN, Church Hill Classics, Church Hill People's News, Church Hill, MD, Church Hill Theatre, Church Hill Photography, Church Hill Productions. A Google search for "Churchill," excluding churchill.com to avoid references to Complainant, yielded 160 million third party results.There are also 58 registered and pending third-party U.S. registered trademarks for "churchhill," as well as 83 registered UK trademarks.Respondent has used the Disputed Domain to display PPC advertising links.
When a trademark incorporates a descriptive term, as in the present case, minor differences are sufficient to eliminate a finding of confusing similarity.Here, the difference is not just of one letter, of two words. The word, Churchill, on the one hand, and the two-word term "Church Hill" on the other. Both the word and term are in common use.Individuals are unlikely to confuse “Church Hill” with Complainant’s“Churchill,” any more than they would confuse the hundreds of other Churchills and Church Hills out there with Complainant.The difference between the mark and domain is “a difference that matters” and, accordingly, the Panel should find the Disputed Domain not identical or confusingly similar to Complainant’s trademark.
Complainant relies on its favorable decision regarding churchhill.info for the notion that "Churchill" is confusingly similar to "church hill." However, that decision was a default
decision and no response was filed. In such case, Complainant's allegations were simply accepted as true. Churchill Ins. Co. Ltd. v. WhoisGuard c/o WhoisGuard Protected FA 912323 (Nat. Arb. Forum Mar. 21,2007).
Here, Respondent registered the Domain Name because it incorporates the descriptive term "church hill," and it has used the Domain Name to promote finance-related PPC Ads on the web site. Respondent had no knowledge of Complainant, its alleged trademark or business when it registered the Disputed Domain. The common nature of "church hill" is underscored by substantial third party use of the term, evidenced by over 1.24 million third party results on the Internet for this descriptive term. Complainant's mark is subject to even greater third party use. A Google search for "Churchill," excluding Churchill.com to avoid references to Complainant, yielded 166 million third party results. There are also over 50 U.S. trademarks incorporating "Churchill" and over 80 UK marks have been registered which incorporate the term. There simply is no evidence at all that Respondent registered the Domain Name based on Complainant's mark. Accordingly, Respondent's registration of this common descriptive term Domain Name, in and of itself, establishes Respondent's legitimate interest.
Respondent's legitimate interest is bolstered by its use of the Domain Name for a web site, which has displayed finance-related PPC advertisements among others.
It is true, as alleged, that a few links have appeared on Respondent's web site were auto insurance-related links. These were not intended by Respondent and do not make Respondent's interest illegitimate. Respondent did not select the links. They were auto-generated by the DomainSponsor domain parking service.
Moreover, as soon as Respondent learned from Complainant that these links had appeared, it arranged for the links to no longer be displayed on the web site. As noted above, the links were removed prior to the initiation of these proceedings. Respondent does not allege that it should keep its head in the sand with respect to potential competing advertisements appearing on its web site. But neither should Complainant. While Respondent may be held responsible for knowing that auto insurance-related ads appeared on the web site, it cannot be held responsible for policing its web site for every trademark existing in the world.
Moreover, the Domain Name is not even identical or confusingly similar to Complainant's mark, as argued above. Accordingly, Respondent would not know of Complainant's mark had it searched for Church Hill trademarks. Complainant was in the best position to note early on that such ads appeared since it has policed such marks before (i.e. Churchill.info). As soon as Complainant made Respondent aware of the links, Respondent removed them. Accordingly, the links should not impact on a conclusion that Respondent has a legitimate interest in the Disputed Domain.
Complainant raises the issue that Respondent corrected the spelling of its business name. However, as noted above, the erroneous spelling of the name was discovered, and corrected, by Respondent before the Complaint was filed and, thus, was not done in a manner to have any influence on the proceedings - since the proceedings had not been initiated by Complainant.There was, thus, no intent to interfere with or influence, the proceedings.
There is no evidence Respondent registered the Domain Name in bad faith. Respondent registered <churchhill.com> because it incorporated a descriptive term. Respondent had absolutely no knowledge of Complainant, its business, or its trademark when it registered the Domain Name, and Respondent has never displayed links related to Complainant's goods and services on its web site. To the contrary, the evidence demonstrates that since 2004 the links appearing on the web site have been either generic, or related to moving or real estate.
Absent direct proof that a common term domain name was registered solely for the purpose of profiting from Complainant's trademark rights, there can be no finding of bad faith registration and use.
There is no evidence that Respondent had knowledge of Complainant's mark when it
registered the Domain Name. Absent such evidence, bad faith certainly cannot be proven.
There is absolutely no evidence Respondent targeted Complainant with respect registration and use of the Domain Name. Accordingly, Respondent has not engaged in bad faith registration or use.
It is true, as alleged in the Complaint, that some auto-insurance PPC ads have appeared on Respondent's web site in the past. As noted above, the links were auto-generated by DomainSponsor.com and, thus, do not constitute evidence that Respondent acted in bad faith.As noted, Respondent arranged to have the links removed once it was alerted to them by Complainant. This does not constitute an admission of bad faith, but rather an accommodation to avoid a dispute.Nevertheless, even if the links are deemed a bad faith use by Complainant, the Complaint should nevertheless be denied because there is no evidence of bad faith registration.
Last, but not least, it should be noted that Complainant has waited eight years since the Domain Name was registered to bring forth any complaint against Respondent. While laches is not generally recognized under the Policy, such a long delay in taking action, nevertheless, questions how confident Complainant has been regarding the success of a domain name
That argument is that it can be inferred from Complainant's long delay in bringing action that Complainant did not genuinely believe the Disputed Domain was registered in bad faith.
In support of these contentions, Respondent offers citations of authority, a declaration of its manager, a page from Respondent’s web site dated June 4, 2009, a Google search for “church hill,” and search results from the United State Patent and Trademark Office and the UKIPO for “Churchill” trademarks.
C. Additional Submission – Complainant
Complainant's request for an order transferring the Domain Name is based upon its well-established rights in the trademark "CHURCHILL." As stated in more detail in the Complaint, the "CHURCHILL" mark has been associated with the provision of insurance-related services for the past 20 years in the United Kingdom ("UK").Complainant's official website, <churchill.com>, was launched in 2000 and has been a source for intonation and quotes regarding Complainant's services ever since.
Over the years Complainant has established substantial goodwill in and rights to the "CHURCHILL" mark. Complainant currently provides car, home, travel, pet, breakdown, van, and motorcycle insurance services. Complainant's services are provided primarily over the Internet and telephone, as well as through independent business partners. Complainant promotes the "CHURCHILL" brand extensively in the UK through press coverage, television, radio, outdoor advertising, door-to-door advertising, and print media. For example, in 2006, in excess of £23 million was spent on direct response and brand advertising (excluding online advertising) to promote the "CHURCHILL" brand.
Consumers are not only well aware of Complainant's "CHURCHILL" mark, but have also responded to Complainant's extensive marketing and promotional efforts. In 2006, for example, Complainant's motor insurance premium sales revenue was in excess of £390 million and its home insurance premium revenue was in excess of £380 million. As a result, Complainant had a 6.200 share of the UK insurance market and was ranked the 3rd largest private motor insurer in that market in 2006 by the Financial Services Authority, an independent body that regulates the financial services industry in the UK. (Data on file with Complainant, taken from report of the Financial Services Authority.) Further, readers of "Your Money" magazine and website have awarded Complainant the following honors:
Best Online Home and Contents Insurance Provider: 2004, 2007
Best Home and Contents Insurance Provider: 2005,2008
Best Online Travel Insurance Provider: 2006
Best Online Motor Insurance Provider: 2006, 2007
Best Motor Insurance Provider: 2006, 2008
Best Pet Insurance Provider: 2008
Best Online Pet Insurance Provider: 2009
Moreover, the "CHURCHILL" mark is so strongly associated with insurance services that 17% of children surveyed in the UK in 2005 thought that "Sir Winston Churchill" was the name of the "dog in the Churchill insurance adverts."Given the substantial sales figures associated with Complainant's services, it can be inferred that the Complainant's mark is widely known and associated with Complainant, on account of the public's response to Complainant's promotional efforts.
Given the strength and fame of Complainant's mark, the "CHURCHILL" trademark at issue in this matter is not merely a 'common term,' as asserted by Respondent in its Response. Complainant's mark is instead a distinctive mark in connection with the provision of insurance related services, in that it is well known in the UK and is the subject of numerous trademark registrations granted by the United Kingdom Intellectual Property Office and the EU Office for Harmonization in the Internal Market, as well as pending applications. Moreover, numerous National Arbitration Forums have recognized Complainant's rights in the "CHURCHILL" mark for purposes of the Uniform Domain Name Dispute Resolution Policy ("UDRP").
Nor is Complainant's "CHURCHILL" mark a descriptive term, as Respondent incorrectly argues. As discussed above and in the Complaint, Complainant's services are focused in the area of insurance. In no way does the term "CHURCHILL" describe or even suggest Complainant's insurance services. Yet Respondent attempts to denounce the confusing similarity between the Domain Name and Complainant's "CHURCHILL" mark by comparing the present circumstances to UDRP cases in which the marks at issue were descriptive of their associated goods or services.
The present matter is instead most similar to Churchill Ins. Co. Ltd. v.
WhoisGuard c/o WhoisGuard Protected, FA 912323 (Nat. Arb. Forum Mar. 21, 2007) and Churchill Ins. Co. Ltd. v. Charlton, FA 912281 (Nat. Arb. Forum Mar. 12, 2007), involving the domain names <churchhill.info> and <churchhill-insurance.com>, respectively. In each case, the addition of the letter "h" to Complainant's "CHURCHILL" mark caused the Panels to conclude that the domain names contained a common misspelling of Complainant's mark, which did not create a distinction, but rather rendered the domain names confusingly similar to Complainant's mark.
Despite Respondent's contention that it registered the Domain Name because it "incorporates the descriptive term 'church hill,'" the facts do not support this explanation. At the heart of the matter is Respondent's use of the Domain Name. Complainant included with its Complaint printouts of two versions of Respondent's website as it appeared on or about March 12, 2009 that reveal Respondent's use of the Domain Name to employ a website composed almost entirely of links to insurance providers in the UK. This link site not only targeted UK individuals searching for information related to insurance, but included a link entitled "Churchill Car Insurance," which led to Complainant's official website at <churchill.com>.In its Response and affidavit annexed thereto, Respondent clearly states that the Domain Name is used to "display sponsored results for financial services provided by DomainSponsor.com for which we receive a share of the revenue earned by DomainSponsor.com from the pay-per-click ads." This use of the Domain Name supports the inference that the Domain Name <churchhill.com> was registered with the intent of capitalizing on the fame of Complainant's mark, by attempting to catch Internet users who seek Complainant's website at <churchill.com>, but inadvertently mistype the domain name with an additional "h."
Although Respondent states that using a domain name to operate a pay-per-click search engine can be a permissible 'business model' under the Policy, this is not a uniform standard among cases interpreting the UDRP, and certainly is not so where the domain name is comprised of another party's trademark. Thus, because the Domain Name consists of a typographical misspelling of Complainant's "CHURCHILL" mark, Respondent's use of the Domain Name to operate a website containing pay-per-click ads directly related to (and in fact including) Complainant's business is evidence that Respondent was not using the Domain Name in connection with a bona fide offering of goods or services, much less any other legitimate interest.
Moreover, another version of Respondent's link sites, which highlights an additional problem with Respondent's use of the Domain Name. Once arriving at one of Respondent's sites, the content may confuse diverted Internet users as to its source, such that the website may be perceived as being sponsored by, affiliated with, or that of Complainant itself. Specifically, this site displays a prominent header reading "Churchhill.com," beneath which various headings appear, beginning with "Car Insurance" and "Home Owners Insurance Quotes." Given the close similarity between the website's header "Churchhill.com" and the Complainant's Domain Name <churchill.com>, where it offers its services, including car and home insurance, Internet users may not immediately realize their error, leading to the perception that the website is sponsored by or affiliated with Complainant, or is Complainant's official website. Based on this use of the Domain Name, it follows that Respondent not only lacked rights or legitimate interests in the Domain Name, but also intended to capitalize on Complainants' goodwill and benefit from its well-known mark.
As discussed in detail in the Complaint, Respondent has not presented any evidence that it is commonly known by the Domain Name. Although the Response refers to the Respondent's change of the key word in the registrant name in the WHOIS information from "Churchill" to "Churchhill," such that it matched the Domain Name, as occurring before the Complaint was filed, this is simply incorrect. The change appears to have occurred the day after Complainant initially filed the Complaint. Regardless, the change was recorded on June 25, 2009, which was after Respondent's representative acknowledged Complainant's cease and desist letter on April 9, 2009. Between that date and May 19, 2009, Complainant's representative repeatedly attempted to discuss the matter with Respondent's representative but never received more than requests to postpone discussions for various reasons. Finally, on May 19, 2009, Complainant's representative informed Respondent's representative that if it would not afford Complainant the opportunity to discuss the matter, Complainant would need to move forward. It was only after this communication that Respondent altered its WHOIS information to mirror the spelling of the Domain Name. Yet although Respondent claims to have registered the Domain Name with the phrase "Church Hill" in mind, the new WHOIS information refers to the Respondent as "Churchhill Financial Services, Ltd." rather than "Church Hill Financial Services Ltd." Further, it appears that the address provided in connection with the Domain Name registration is comprised of incorrect information. Pursuant to Rule 2(b), Complainant transmitted a copy of the Complaint via registered mail to Respondent simultaneously with filing the Complaint with the NAF, utilizing the postal address contained in the WHOIS record. On July 31, 2009, however, the Complaint was returned to Complainant, with an indication from the Airport Post Office, Cayman Islands, that the address is "unknown.”
Nor has Respondent refuted Complainant's evidence of Respondent's registration and use of the Domain Name in bad faith.
Further to the evidence provided of the fame of Complainant's mark, it can reasonably be inferred that Respondent was at least aware of Complainant's "CHURCHILL" mark when it registered the confusingly similar Domain Name, especially given the prior use of the Domain Name to display links to and in competition with Complainant's services. Again, Respondent inaccurately characterizes Complainant's "CHURCHILL" mark as a "common descriptive term." But here, Complainant's "CHURCHILL" mark does not describe its insurance offerings, nor is it a common term. Rather, Complainant's "CHURCHILL" mark is a well-known, distinctive indicator of the source of its insurance services. Respondent reasonably should have been aware of Complainant's "CHURCHILL" mark, either actually or constructively. In fact, Respondent's location in the Cayman Islands increases the likelihood of actual awareness of Complainant's "CHURCHILL" mark, given that the Cayman Islands are a "British Overseas Territory" and Complainant's business is based in the United Kingdom.
Given the strength of Complainant's mark, Respondent's use of the Domain Name to capitalize on Complainant's trademark interest constitutes sufficient evidence of Respondent's use of the Domain Name in bad faith, in that it "intentionally attempted to attract, for commercial gain, Internet users to [its] web site . . . by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location."Further, from Respondent's diversionary use of the Domain Name, it follows that Respondent registered the Domain Name "primarily for the purpose of disrupting the business of competitor" and therefore in bad faith.
Despite Respondent's attempt to disclaim responsibility for the use of insurance-related links on the website to which the Domain Name resolves, Respondent is ultimately responsible for the content of its website. Respondent improperly attempts to place responsibility for this content on "DomainSponsor.com." If the Panel is to follow Respondent's theory, Respondent could continue to reap the benefits of any insurance-related links that appear on this infringing website, all the while disclaiming liability for the links based upon the alleged technical source of the links.
Regardless of whether the advertising/links are for related or unrelated goods and services, the use of a domain name confusingly similar to Complainant's mark to attract Internet users to Respondent's website for Respondent's likely commercial gain is not considered to be 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).
Respondent essentially argues that its use of insurance-related links on its website should be overlooked because the links were removed after receiving Complainant's cease and desist letter. The appropriate time period in which Respondent's use of the Domain Name should be examined, however, is the period prior to Respondent's receipt of notice of Complainant's position.Likewise, Respondent's change to the nature of the links appearing on its website is irrelevant to the present matter, because it occurred only after receiving notice of the dispute.
Further, Respondent's website, in its present state and as reflected in the Response, contains a link entitled "Used Cars," which resolves to a website containing links that appear to vary from time to time, but at present include a link to "AARP Auto Insurance." Therefore, Respondent's website continues to contain competitive links to the potential detriment of Complainant.
Respondent argues that "[w]hile laches is not generally recognized under the Policy," Complainant's "long delay in taking action, nevertheless, questions how confident Complainant has been regarding the success of a domain name challenge."The doctrine of laches does not apply under the Policy.Further, based on Complainant’s confidence in asserting its prior challenges to the domain names <churchhill.info> and <churchhill-insurance.com> under similar circumstances, Complainant submits that the time period between the registration of the Domain Name and the present proceeding has no relevance to Complainant’s level of confidence in the assertions that the use and registration of the Domain name contravenes the Policy.
In support of these contentions, Complainant offers citations of authority, pages from Complainant’s web site, web pages showing awards received by Complainant, an article relating to the notoriety of Complainant’s bulldog logo, a printout of all of Complainant’s UK and CTM registrations, two pages from Respondent’s web site on or about March 12, 2009, a copy of a returned envelope containing the Complaint, and a page from a web site to which a link on Respondent’s web site resolves.
D. Additional Submission – Respondent
Respondent will be brief as most of Complainant's arguments raised in its Additional Submission are addressed in the Response. Complainant relies almost entirely on isolated insurance links that appeared on its web site on or about March 12, 2009. As set forth in the Response, however, there simply is no evidence Respondent targeted Complainant's trademark. Those links were automated and unintended. As set forth in the Response, Respondent contacted the domain name parking service that was displaying the links and directed it to remove the links that occurred. As noted in the Response, neither the appearance of these unintended links or their removal constitutes bad faith use.
The appearances of these links were an isolated incident and the argument that they constitute bad faith is rebutted by several archived web pages of the Disputed Domain appearing several years earlier.As early as November 28, 2004, Respondent used a page in which the top links are for "Church Bell" and "Thinker." While insurance links do appear on the web site, they are among several other generic categories, such as travel, gifts, shopping, health, entertainment, home, and computers. There is absolutely no evidence that Respondent was targeting Complainant. A year later, as of November 25, 2005, the top links were for "personal finance" and "mortgages," while insurance links were again just one of nine generic categories. The following year on August 30, 2006, the top links were "Vacation winter" and "Discount travel." The earliest available archived web pages for Respondent's web site also show no evidence of targeting Complainant's mark but, rather, simply the display of generic links.
As noted in the Response, even if the links appearing in March 2009 were deemed a bad faith use by Complainant, the Complaint should nevertheless be denied because there is no evidence of bad faith registration.Moreover, the links were all removed prior to initiation of the Complaint. To the contrary, the earliest available links demonstrate no connection to Complainant's goods and services, whatsoever. Accordingly, Complainant's arguments that the isolated insurance links make Respondent's interest illegitimate and in bad faith must fail.
In support of these contentions, Respondent offers citations of authority, pages from its web site dated November 28, 2004, November 25, 2005, August 30, 2006, and September 22, 2001.
E. Supplemental Additional Submission – Complainant
The Panel, as discussed below, has not considered this document.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum for the Panel to give any weight to the factual contentions made by a complainant, and the certification required by ¶5(b)(viii) of the Rules is the minimum for the Panel to give any weight to the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents.The Panel finds that the factual contentions made by Complainant will be given weight as appropriate.
Respondent has provided the required ¶ 5(b)(viii) certification, and additional documents.The Panel finds that the factual contentions made by Respondent will be given weight as appropriate.
The National Arbitration Forum has determined that a hard copy of the Response was not receivedbefore the Response deadline.Rule 5(b) requires each response to be filed in hard copy, as does Supplemental Rule 5(b).
Rule 10(b) requires the Panel to ensure that each party is given a fair opportunity to present its case.Rule10 (d) gives the Panel the power to determine the admissibility of the evidence.To deny admissibility to the Response on the technical ground of failure to file a hard copy would be to deny Respondent the opportunity to present its case.Especially is this so in view of the fact that Supplemental Rule 7(d) permits the filing of Additional Submissions (as here) in hard copy or electronic form.See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process..."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).The Panel admits the Response and has considered it in its decision.
The National Arbitration Forum has determined that Complainant’s Supplemental Additional Submission is not provided for under Supplemental Rule 7(e).The Panel believes that Complainant has been given ample opportunity to present its case in its Complainant and Additional Submission.The Panel declines to admit Complainant’s Supplemental Additional Submission and has not considered it in its decision.
The Panel finds that Complainant has rights in the Mark. UK Registration No. 2042931 and CTM Registration No. 822916 introduced by Complainant are the bases for this finding.Also persuasive are the previous findings of other panels, as cited by Complainant above.
The Panel finds that it is not necessary for Complainant to have registered its CHURCHILL mark in the country of Respondent’s residence (the Cayman Islands).See 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); see also The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2)the 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.
Identical and/or Confusingly Similar
The disputed Domain Name contains the distinctive portion of Complainant’s CHURCHILL mark with the only alterations being the addition of the letter “h” and the affixation of the generic top-level domain “.com.”Panelists Johnson & O’Connor find that the Domain Name is confusingly similar to the Mark pursuant to Policy ¶ 4(a)(i).See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The panels in the cases cited by Complainant also found that a domain name including “churchhill” was confusingly similar to the Mark.
While Respondent contends that the Domain Name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Further, Respondent’s contention that it selected the Domain Name to represent the descriptive term “church hill” is unconvincing to the Panel.The evidence submitted in support of this contention is its manager’s declaration, which includes statements of fact that are not substantiated by any details and that are not corroborated by any other evidence.Respondent’s own use of the Domain Name does not separate the two words of the term or otherwise emphasize (e.g., through initial capitalization of “church” and “hill”) that the term includes two words. Even if the Panel were to accept this contention, the resultant finding would be irrelevant to the issue of confusingly similarity, because that issue does not take into account the intent of the domain name registrant. See eMedicine.com, Inc. v. Lim, DTV2001-0003 (WIPO Apr. 5, 2001) (finding that Policy
¶ 4(a)(i) is based on comparison of the mark and domain name alone, without any regard to the manner of actual use or intent to use the disputed domain name); see also Toronto-Dominion Bank v. Karpachev D2000-1571 (WIPO Jan. 15, 2001) (“In determining whether a Domain Name is confusingly similar to a trademark, the intention of the Domain Name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed.”).
Panelists Johnson and O’Connor find that the Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
Panelist Brown finds that the Complainant has not met its burden of proof under ¶ 4(a)(i) of the Policy, for the following reasons.
The question is whether the Domain Name <churchhill.com> is confusingly similar to the trademark CHURCHILL. To answer that question, a straight comparison must be made between the Domain Name and the trademark, untrammeled by factors such as the intention of the registrant and the use to which the Domain Name has been put since registration. Those matters are left to be dealt with under the subsequent elements in the Policy.
Over the years since the UDRP was established, various guides have been formulated to assist in the process, but the test always is and remains whether the domain name is confusingly similar to the trademark relied on. In particular, it must be remembered that in keeping with established principles of the interpretation of statutes, words that are used in a document such as the Policy are not there for decoration, but must be given some work to do and that it must be shown that on the balance of probabilities the domain name is in fact confusing as well as similar.
When that comparison is made, it is apparent that the two expressions in the present case are similar, but not confusingly similar. They are not confusing because the objective bystander who is prepared to read the domain name without embellishing it or reading hidden meanings into it, will see that it consists of two separate words which, taken either together or separately, have a different meaning from the meaning of the trademark. The reader cannot be confused on noting that the Domain Name is ‘churchhill’, not ‘churchill’, evoking as it does a concept consisting of ‘church’ and ‘hill’, whereas the trademark evokes a concept consisting solely of the name or entity ‘churchill’.
As the Respondent has put it in its submission, ‘Individuals are unlikely to confuse “Church Hill” with Complainant’s “Churchill,” any more than they would confuse the hundreds of other Churchills and Church Hills out there with Complainant’.
The usage of these differing terms sufficiently distinguishes the disputed domain name from Complainant’s CHURCHILL mark. See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter.In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.").
Against this view, Respondent says that such a small spelling difference of one letter cannot detract from the similarity between two expressions and that the result is that they are confusing. In other words, the Complainant argues that the Internet user will read the domain name as one word, i.e. as ‘churchill’ and will be confused into thinking that it refers to Complainant.
It is true that there are UDRP decisions where similar views have been expressed, such as Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i)”).
But in those cases, the same word was to be found in the domain name as in the trademark and the mere addition of a letter here or there did nothing but create an artificial word, so odd and ill fitting that it was still confusingly similar to the trademark on which it was so obviously based. That was so in all of the cases cited by the Complainant, State Farm Mut. Auto. Ins. Co. v. Unasi Mgmt. Inc., FA 467825 (Nat. Arb. Forum June 8, 2005) (where the domain names were <sstatefarm.com> and <statefarmn.com> and the trademark was STATE FARM); Bank of Am. Corp. v. Ling Shun Shing, FA 132447 (Nat. Arb. Forum Dec. 30, 2002) (where the domain names were <bankofamericana.com>, <bankofamericca.com> and <bankifamerica.com> and the trademark was BANK OF AMERICA) and Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (where the domain name was <neimanmacus.com> and the trademark was NEIMAN MARCUS). There are many similar cases, some of which are cited in Lindsay, International Domain Name Law ICANN and the UDRP, Hart Publishing, 2007, pp 259-261.
In the present case, however, the domain name consists of two words that stand in their own right and it does no violence to the language to continue to give them their natural meaning. When that is done, the two words of the domain name are similar to the trademark because of the similarities in spelling, but they are not confusing, as they have clearly different meanings, except to those who are not reading the domain name correctly.
Complainant, however, argues that the panel should not read the domain name in this way, as Respondent has ‘intentionally’ misspelled the trademark and that in any event ‘Respondent’s use of the confusingly similar Domain Name to redirect Internet users to a directory site with links to insurance products and services similar to Complainant’s products and services further increases the likelihood of confusion’. It is now well established that those considerations are not to be brought into account on this issue and that the only matters in the equation are the plain terms of the domain name and the trademark. The panel is therefore left to make a straight comparison between a domain name, which consists of two common words with natural meanings, and a trademark consisting of an entirely different word.
The Complainant also argues that there are two decided UDRP cases where this issue has already been resolved in its favour, Churchill Ins. Co. Ltd. v. WhoisGuard c/o WhoisGuard Protected, FA 912323 (Nat. Arb. Forum Mar. 21, 2007) and Churchill Ins. Co. Ltd. v. Charlton FA0912281 (Nat. Arb. Forum Mar. 12, 2007). Naturally, panels have regard to previous decisions on similar facts in the interests of consistency, but they do not relieve the panelist of the obligation to decide the case before it.
Moreover, each of the cases cited was undefended, no argument was put against the Complainant’s contentions and the panelists who decided those cases did not have the advantage of a sustained argument that brought out the real issues for decision, as has been done in the present case where Respondent’s submission has presented the correct way in which the domain name should be interpreted.
Complainant, however, still has an argument that even without evidence of intention or evidence of the use of the domain name, it is possible that some users of the Internet will see the domain name, wrongly think that it refers to Complainant and hence will have been confused.
The problem for Complainant in this argument is that although, of course, it is possible that some users may be so confused, that result is improbable. Some users will read the domain name as ‘churchill’, but on the balance of probabilities the preponderance of them will conclude that the ‘churchill’ so evoked is Sir Winston Churchill, not Complainant. Indeed, the name and recognition of the former Prime Minister and his ancestors have become so ingrained in the public psyche of the UK and internationally over hundreds of years that it is difficult to imagine a single reason why any internet user would assume that the domain name, even if read wrongly as ‘churchill’, referred to any person or concept other than Sir Winston Churchill.
Nor is it any reflection on Complainant to note, as the Panel has done elsewhere, that Complainant’s mark is not famous or known in Respondent’s country of residence. Indeed, it appears from the Complaint that in some jurisdictions the insurance services of Complainant are offered under the name of the parent company, The Royal Bank of Scotland, rather than that of the Complainant.
It therefore seems highly artificial to suggest that when the name Churchill or ‘churchill’ is used, or when the reader thinks it is being used or evoked, it is the Complainant that springs to mind.
Yet, that is what Complainant must prove, for the Policy requires it to show that the domain name is confusingly similar, specifically to the trademark relied on by Complainant. But in the present case Complainant has not shown this element either on the balance of probabilities or at all.
Indeed, it is clear that Complainant in its promotional material on its website and elsewhere, by its use of the bulldog image and logo so synonymous with Sir Winston Churchill, has sought to evoke Sir Winston Churchill when the Churchill name is used. That makes it even more unlikely that the domain name would be taken by anyone to be referring to Complainant or its trademark.
Rights or Legitimate Interests
Once Complainant makes a case in support of its allegations, the burden of production shifts to Respondent to put forward some evidence to show that 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”).
¶4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent does not contend that the circumstances of either ¶ 4(c)(ii) or 4(c)(iii) are present in this case.Respondent even admits that it has made and is making a commercial use of the Domain Name at its web site.
The issue then revolves around the circumstances of ¶ 4(c)(i).The following factual chronology is helpful in the resolution of whether or not those circumstances have been met:
November 11, 1997
UK Registration No. 2042931 for the Mark issued to Complainant
June 17, 1999
CTM Registration No. 822916 for the Mark issued to Complainant
September 19, 1999
Registration of Complainant’s domain name <churchill.com>
May 5, 2001
Registration of Respondent’s Domain Name <churchhill.com>
September 22, 2001
Respondent uses the Domain Name at a parking service web site displaying numerous commercial links in the following categories:small business, web and ecommerce, gambling, gifts, education, computer services, travel, finance, business services, home, computers, electronics, sports, marketing, personal finance, business, insurance, auto, shopping, health
November 28, 2004
Respondent uses the Domain Name at a sponsored web site displaying featured commercial links (none relating to insurance) and grouped commercial links in the following categories:travel, entertainment, gifts, shopping, health, home, finance, computers and insurance
November 26, 2005
August 30, 2006
Ditto (but one of the featured commercial links relates to insurance)
March 12, 2009
Respondent uses the Domain Name at a sponsored web site displaying only insurance-related commercial links
April 9, 2009
Respondent acknowledges Complainant’s cease-and-desist letter
June 4, 2009
Respondent uses the Domain Name at a sponsored web site displaying featured links and grouped links, none relating to insurance
June 26, 2009
The National Arbitration Forum initiates this proceeding
From the foregoing table, it is evident that Respondent did not have actual notice of this dispute until April 9, 2009, which is almost eight years after Respondent registered and first used the Domain Name.During the interim period between registration and notice, Respondent’s use of the Domain Name was primarily in conjunction with displaying featured and grouped links not related to insurance.Although one of the grouped links was insurance and although one of the featured links was insurance, these are only a part of the featured and grouped links displayed during the interim period.
It is only with Respondent’s March 12, 2009 web site that insurance links rise to the fore.Here, Respondent clearly was engaged in a use of the Domain Name in areas of business that were the same as those of Complainant, because, at that time, The Domain Name resolved to a website featuring sponsored click-through links that diverted Internet users to the websites of Complainant’s competitors.Complainant contends that Respondent is profiting through the generation of click-through fees.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 Royal Bank of Scot. Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
While Respondent contends that it does not have control over the advertisement links that are featured on the disputed domain name, the Panel finds Respondent to be ultimately responsible for the content contained on the disputed domain name’s resolving website.See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name.However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
But, Respondent’s use of the Domain Name in the manner just described occurred before Respondent received actual notice of the dispute from Complainant, and after Respondent made bona fide use of the Domain Name.Further, Respondent promptly removed these links upon receipt of notice and substituted featured and grouped links not related to insurance.
Complainant argues that Respondent had earlier notice of the dispute, either by reason of actual knowledge of the fame of the Mark, or by reason of the constructive notice effect of Complainant’s UK and CTM registrations of the Mark, and that its use thus was not bona fide.
Regarding actual notice arising from fame of the Mark, the Panel finds that the Mark is not famous or known in Respondent’s country of residence. Complainant has demonstrated substantial current notoriety of the Mark.But, the evidence of use, advertising, and promotion submitted by Complainant pertains only to the United Kingdom.No evidence has been submitted of any use, advertising, or promotion of the Mark in any other country, including but not limited to the Cayman Islands. It is not enough for Complainant to say that Respondent’s country of residence is a “British Overseas Territory.” Previous Panels have held that although a finding of fame was made in one jurisdiction, the fame of that mark does not necessarily extend to other jurisdictions in which it is not famous.For example, in KCTS Television Inc. v. Get-on-the-Web Ltd, D2001-0154 (WIPO Apr. 20, 2001), the Panel refused to infer that the call-letters of a “public television station operating in the U.S. Northwest and in British Columbia, Canada would or should be known to someone living in London, England.”
Regarding constructive notice of the Mark, this Panel finds that, for Marks registered with the UKIPO and OHIM, actual knowledge is essential under the Policy and constructive notice is insufficient.See The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”).
The Panel finds that Respondent has met its burden of proof under ¶ 4(c)(i) of the Policy.
The Panel finds that Complainant has not met its burden of proof under ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Panels have held that the issue of bad faith is mooted by a finding of rights or legitimate interest in the respect of the domain name. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).
Although the Panel is not required to make findings on this issue, it will do so in the interest of completeness.
The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith.See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant’s contentions as to bad faith are founded on ¶ 4(b)(iii) and 4 (b)(iv) of the Policy.Complainant also contends that Respondent has engaged in bad faith registration and use of the Mark by engaging in typosquatting.See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Phil., FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Each of these contentions requires Complainant to prove that Respondent had (or should have) known of Complainant and its activities prior to bad faith registration and use of the Domain Name.As the Panel has previously discussed, there is no evidence of Respondent’s knowledge of the Mark (or of Complainant) prior to its registration of the Domain Name.As the Panel has previously discussed, there is no evidence of Respondent’s knowledge of the Mark (or of Complainant) prior to its bona fide use of the Mark.All that Complainant has demonstrated is one instance of bad faith use of the Domain Name that was terminated by Respondent upon receiving actual notice from Complainant. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant); see also Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven.Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”).
There is also a long period between Respondent’s first legitimate use of the Domain Name (May 5, 2001) and Respondent’s illegitimate use of the Domain Name (March 12, 2009).Complainant’s failure to take action persuades the Panel that Complainant did not view Respondent’s web site as a problem, even though it included insurance related links, for almost 8 years.See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Althoughlaches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The Panel finds that Complainant has failed to meet its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Bruce E. O’Connor, Chair
Carolyn Marks Johnson, Panelist
The Honourable Neil Anthony Brown QC, Panelist
Dated:September 1, 2009
National Arbitration Forum
 See extract from Complaint. “... The Royal Bank of Scotland Group plc (“RBS”) offers a wide range of financial products and services, including consumer, commercial lending and insurance services.”