9th Jul 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nationwide Maritima Vida E Previdencia, S.A. and Nationvide Mutual Insurance Company
Case No. DBIZ2002-00082
1. The Parties
1. Nationwide Martitima Vida E Previdencia, S.A. (hereinafter referred to as Nationwide Brazil) with address Av. Presidente Wilson, 231, 19th Andar, Centro, Rio de Janeiro, Rio de Janeiro, Brazil, and
2. Nationwide Mutual Insurance Company (hereinafter referred to as Nationwide USA), with address Office of the General Counsel, One Nationwide Plaza, Columbus, Ohio 43215, United States of America.
Complainants´ authorised representative in this case is Daniel Advogados, Av. Republica do Chile 230/6th Andar, Centro, Rio de Janeiro, Rio de Janeiro, Brazil.
Respondent is Nigel Penn-Simkins, 18 Denmark Avenue, Woodley, Reading, United Kingdom.
2. Domain Name and Registrar
The domain name upon which the Complaint is based is <nationwide.biz>.
The Registrar of the domain name is Registration Technologies, Inc, 10 Crestview Drive, Greenville, Rhode Island, 02828 United States of America.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel,Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the Center) in e-mail form on April 25, 2002, and in hardcopy on April 30, 2002. The Center issued an Acknowledgement of Receipt of Complaint on April 30, 2002.
On May 14, 2002, the Center issued a Notification of STOP Complaint and Commencement of Administrative Proceeding. The Notification was communicated to Respondent (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact) by Post/Courier (with enclosures) and by e-mail (without enclosures). It was also copied to Complainant´s authorized representative by e-mail as well as to ICANN and the Registrar. The Notification indicated June 3, 2002, as the last date for submitting a Response.
As the Center had not received any Response within the time indicated in the Notification, the Center issued a Notification of Default on June 10, 2002. On June 11 and 12, 2002, the Center received some communications from Respondent stating that a Response had in fact been sent in time but had not been received by the Center, due to some special circumstances, primarily that a number of services in the United Kingdom were closed because of the Golden Jubilee of Queen Elisabeth II. The Center withdrew the Notification of Default on June 14, 2002. The Response then received by the Center was dated June 3, 2002. According to the Response, that had been copied by e-mail to Complainants´ authorized representative.
On June 28, 2002, the Center issued an Acknowledgement of Receipt of Response.
Having invited Mr. Henry Olsson to serve as a Panelist in this case, the Center received, on June 28, 2002, Mr. Olsson´s Statement of Acceptance and Declaration of Impartiality and Independence, the Center issued the same day a Notification of Appointment of Administrative Panel and Projected Decision Date appointing Mr. Olsson as Sole Panelist.
The Sole Panelist considers the Administrative Panel to be properly appointed in accordance with the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The Center had on June 18, 2002, received a request from Complainant to submit additional statements. Following the appointment of the Panel, the Sole Panelist issued, on July 4, 2002, Administrative Panel Procedural Order No. 1 to the effect that:
1. Complainants were allowed to submit short additional observations, which would have to reach the Case Manager before the end of the business hours in Switzerland on July 5, 2002, which observations Complainants had to copy to Respondent,
2. Respondent was allowed to submit any additional observations on Complainants’ statement to reach the Case Manger before the end of the business hours in Switzerland on July 8, 2002, and
3. the Panel would allow no more statements to be made in the case.
The Order was transmitted by e-mail to Complainants’ authorized representative and to Respondent on July 4, 2002, at 13.10 Geneva time.
On July 5, 2002, the Center received by e-mail a communication containing Additional Observations from Complainants’ authorized representative. That communication also indicated that a copy of it had been sent or transmitted to Respondent on the same day by facsimile with a confirmation of transmission, by courier service, postage pre-paid and return receipt requested, and electronically via the Internet with a record of transmission maintained in the file.
On July 8, 2002, a Response to Additional Observations was received by the Center from Respondent, to which Response is attached a copy of a letter from Mr. Colin Locke, Managing Director of Nationwide UK.
The Panel discusses below under Discussion and Findings certain claims which Complainants’ have made concerning a number of procedural elements in this case. As regards other formal aspects of the case, the Panel has reviewed the Complaint and the Response and the Center’s verification of the formal requirements and its assessment of the circumstances in the case and is satisfied that the requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules are met.
The Panel notes that Complainants have, in accordance with Paragraph 3.c.xii of the STOP Rules, agreed to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of this complaint, to the location of the jurisdiction of the courts which exercise jurisdiction over the location of the principal office of the concerned Registrar (Registration Technologies, Inc) at the Registrar’s address as indicated above.
The Panel furthermore notes that it has been informed by the Center that there are two additional IP Claimants in the queue.
4. Factual Background
Nationwide Maritima Vida E Previdencia, S.A. is a Brazilian corporation having its principal place of business in Rio de Janeiro, Brazil. Nationside Mutual Insurance Company is a corporation under the law of the State of Ohio, United States, having its principal place of business in Columbus, Ohio. Both are members of the Nationwide Mutual Insurance Group of companies. Nationwide USA controls indirectly Nationwide Brazil which sells life insurance and long-term savings products in Brazil on behalf of the Group.
Respondent’s activities are dealt with more in detail below under Parties’ Contentions.
The Panel notes that from the printout of the WHOIS database of April 25, 2002, (submitted by Complainants as an annex to the Complaint) it appears that the Registrant of the domain name at issue is Nigel Penn-Simkins, 18 Denmark Avenue, Woodley, Reading, Berks RG5 4RS, United Kingdom.
5. Parties’ Contentions
The validity of Respondent’s Response
In their Additional Observations submitted by July 5, 2002, Complainants allege that Respondent has submitted no evidence that its Response was timely submitted in compliance with Section 5.a of the STOP Rules and that, consequently, the Notification of Respondent Default dated June 10, 2002, should be reinstated and this matter be decided based solely upon the Complaint.
In support of their allegations in this respect Complainants submit a number of circumstances to show that a number of procedural rules relating to the submission of Responses had not been respected by Respondent. One of those invoked by Complainants is that Complainants’ authorized representative received the Response by facsimile sometime between 6.00 p.m. on June 5, 2002, and 8.00 a.m. on June 6, 2002, all Rio de Janeiro time; the only copy of the Response that Complainants received by e-mail was the copy attached to the e-mail of June 12, 2002, to the Case Manager which was also copied to Complainants.
The Additional Observations contain the prescribed certification as to the completeness and accuracy of the information contained in them.
Complainants’ trademark and the issue of identity.
Complainants first assert that the dispute is properly within the scope of the STOP and that an Administrative Panel has jurisdiction to decide the dispute as the Registration Agreement pursuant to which the domain name at issue is registered incorporates the STOP. The Registration Agreement has, by its own terms, been in effect since July 24, 2001.
Complainants contend that the trademark NATIONWIDE is a service mark and trade name element in which Complainants have rights. Nationwide USA was founded, under another name, in Columbus, Ohio, in 1926 providing automobile insurance and later also fire and life insurance, and it added health insurance to its product line in the 1940s. In 1955, the company changed its name to Nationwide Mutual Insurance Company and began offering casualty, automobile, life and health insurance under the service mark NATIONWIDE and has since then continued to provide such insurances together with financial services under the same service mark. Today Nationwide USA and its affiliated companies do business under the same service mark in all the 50 states of the United States of America and also in Canada, the Virgin Islands, Asia, Europe and Latin America.
Complainants furthermore contend that Nationwide USA owns a number of service marks registered with the United States Patent and Trademark Office (USPTO). Thus, the mark NATIONWIDE was registered on August 13, 1968, under number 0854888, in International Class 36 for underwriting and sale of all lines of insurance, including fire, life and casualty, and on November 19, 1996, under number 2017147 in International Class 36 for financial services. Furthermore, the mark "NATIONWIDE Composite" was granted registration on July 25, 2000, under number 2371088 in International Class 36 covering insurance services. Complainants have submitted copies of the relevant search results relating to the registrations in the USPTO database.
As regards the Brazilian market, Complainants contend that NATIONWIDE USA owns trademark and service mark applications filed with the Brazilian Patent and Trademark Office. Complainants refer in this context to Application No 822905175 concerning the mark NATIONWIDE, filed on June 30, 2000, in International Class 36, covering mainly subscription and sales of all types of insurance and also some financial services, and to Application No 822905264 concerning the mark "NATIONWIDE Composite", filed on the same date, in International Class 36 covering likewise mainly subscription and sales of all types of insurance and also some financial services. Complainants have provided copies of the search results from the Brazilian database relating to those applications.
In addition, according to Complainants, Nationwide USA also owns registrations of the mark NATIONWIDE in Benelux, Germany, Italy, Japan, Mexico, Peru and Thailand and has filed applications in some other countries.
Complainants add that Natiowide USA also is the owner of the registration of the domain name <nationwide.com>.
Complainant assert that Nationwide USA authorizes Nationwide Brazil to use the mark NATIONWIDE in Brazil. Nationwide Brazil currently owns a number of domain name registration in Brazil, namely the following: <nationwide.com.br>, <maritimanationwide.com.br>, <nationwidemaritima.com.br>,<"natiowideseguradora.com.br>, <nationwidevida.com.br>, <nationwidevidaprevidencia.com.br>, and <segurosnationwide.com. br>.
Complainants contend that they submitted an IP Claim for, and application to register, <nationwide.biz> and are presently third in line to present a STOP claim against Respondent. In light of these circumstances Complainants have, according to the Complaint, a sufficient common interest in the domain name at issue for joinder to be permissible in this proceeding.
Complainants contend that in the light of what has been submitted regarding the various trademarks/service marks, it is undisputed that the domain name <nationwide.biz> is identical with NATIONWIDE which is a trademark, service mark and trade name element in which Complainants have rights.
Respondent’s rights or legitimate interests in the domain name at issue
Complainants submit that Respondent has no rights or legitimate interest in the domain name <nationwide.biz>, which is, according to Complainants, evidenced by a number of circumstances, briefly summarized below.
Respondent, Mr. Penn-Simkins, has no authorization from any of the Complainants or any of the other members of the Nationwide Mutual Insurance Group of companies to use the mark NATIONWIDE.
Also, according to Complainants, searches conducted in the USPTO and the UK Patent Office databases reveal no trademark or service mark registrations or applications relating to the mark NATIONWIDE in the name of Penn-Simkins. Complainant have provided copies of those search results.
Similarly, searches of the UK Companies House database reveal no instance when Respondent, Mr. Penn-Simkins, has used or attempted to register the word NATIONWIDE as a trade name, a trademark or any other type of business identifier. Also in this respect, Complainants have submitted copies of the relevant search results.
Complainants state that Respondent never filed any IP Claim with NeuLevel for the expression NATIONWIDE. Furthermore, to the best of Complainants’ knowledge, Respondent has never used the domain name at issue in connection with a bona fide offering of goods or services or shown any preparation to do so. To support this, Complainants have submitted a copy of a http error message received when an attempt was made to access the domain name on April 25, 2002.
In their Additional Observations, Complainants have further developed their view that Respondent has not acted on the instructions or with the authorization of Nationwide Technology Recruitment plc, that it is significant that Respondent applied for the registration of <nationwide.biz> in its own name, using its home address rather than in the name of its employer, Designation.com.
Respondent’s registration or use of the domain name in bad faith
In this respect, Complainants submit that Respondent registered and/or used the domain name in bad faith, which is, according to Complainants, evidenced by a number of circumstances, briefly summarized below.
As of the date of the application for the registration of the domain name at issue, Nationwide USA’s mark NATIONWIDE had been in use for more than 40 consecutive years, had been registered both in the United States and a half-dozen other countries around the world and used in relation to Nationwide USA’s products and services in over two dozen countries in four continents. Consequently, according to Complainants, Respondent could not have been unaware of Nationwide USA’s right to the expression NATIONWIDE at the time of the application for registration of the domain name at issue. It must, according to Complainants, be assumed that Respondent registered the domain name containing Complainants’ well-known mark in order to attract, for commercial gain, Internet users to its website or another on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location, or of a product or service on his website or location.
According to Complainants, Respondent has, by registering the domain name at issue deprived Nationwide USA, Nationwide Brazil and the remaining members of the Nationwide Mutual Insurance Group of companies of the ability to use the domain name <nationwide.biz> to further their legitimate business activities. As such, Respondent’s registration of that domain name disrupted Complainants’ business.
In accordance with Paragraph 4.i of the STOP and for the reasons described and summarized above, Complainants request that the Administrative Panel issue a decision that the contested domain name be transferred to Nationwide USA, or, if that is not possible, to Nationwide Brazil.
Respondent first states that it acts on behalf of Nationwide Technology Recruitment plc (hereinafter referred to as Nationwide UK) which was incorporated on November 11, 1991, in England under number 2666712 at the address: Rowan House, Stonefield Road, High Wycombe, Bucks, HP14 4SP, United Kingdom. To support this contention Respondent has submitted a copy of a Companies House listing. The contact details of Nationwide UK are "Colin Locke, Managing Director, Nationwide Technology Recruitment plc, St Andrews House, St Mary´s Walk, Maidenhead, Berkshire SL6 1QZ, United Kingdom"; telephone, telefax and e-mail addresses are also indicated.
According to Respondent Nationwide UK´s website is currently at www.nationwider.com, which homepage also contains a mention of Respondent’s company "Made@Designation.com". Respondent has submitted a print of that homepage. Furthermore, Respondent contends that the domain name <nationwider.com>itself was registered by Respondent on March 1, 2000. Respondent has submitted a printout of that registration.
Respondent contends that Nationwide UK has a right to use the name as a de facto trademark since more than 10 years and also for several years in Netherlands where the company also has an office. Nationwide UK is in the business of recruitment which is different from Complainants’ business which is insurance, and also operates in a geographic location, namely Europe, which is completely different from Complainants’ which operate in North and South America. It is, according to Respondent, therefore clear that Nationwide UK is not a competitor to Complainants and thus has not sought to disrupt Competitors’ business.
Respondent submits that Complainants have no more rights to use the generic name NATIONWIDE than Nationwide UK has. Hundreds of companies throughout the world trade in many different businesses use the trade name NATIONWIDE. Nationwide UK intends to use the domain name <nationwide.biz> to support its growing international business in Europe. Respondent submits that Complainants already have access to a suitable international name, i.e. <Nationwide.com> and thus do not need another one and are only seeking to prevent Nationwide UK’s legitimate use of it.
The reason why Nationwide UK has not yet started its use of the new domain name is because it began, immediately after the registration of <nationwide.biz> ,a wide-ranging review of its branding, involving research and consultations in preparation of the adoption of the new domain name and a fundamental redesign of its website and all other marketing material, which exercise is still in process.
According to Respondent it is possibly in error in omitting to use the name of its client Nationwide UK in the application to register the domain name at issue; according to Respondent there is ample evidence about the connection between Respondent and its client and that Respondent was acting in good faith. It has not been possible to correct the error because activities concerning the domain name are frozen after the proceedings began. A thorough search of the Internet for "designation" or <designation.com> would have found the connection with Respondent´s client Nationwide UK through that company’s current website. Respondent would accept enforced transfer of his ownership of the domain name at issue to the ownership of his client Nationwide UK since this always has been the original intention and would in any case be accomplished once the proceeding has been completed.
Respondent requests the Administrative Panel to deny the remedy requested by Complainants.
In its Additional Response of July 8, 2002, Respondent states that it in fact acted upon instructions by Nationwide UK. To support this, Respondent has attached a copy of a letter dated July 8, 2002, from Mr. Colin Locke, Managing Director of that company, to the Case Manager where Mr. Locke states that he received a blind copy of the response sent by Mr. Penn-Simkins on July 3, 2002. To the letter is attached a copy of a printout of the header of an e-mail from Mr. Penn-Simkins to <email@example.com> on July 3, 2002, at 12.40, with a copy to "walter <firstname.lastname@example.org>" and where the subject is mentioned as <nationwide.biz>.
In the copy of the letter Mr. Locke also confirms that his company ("we") instructed Respondent to attempt to obtain the domain <nationwide.biz> on the company´s behalf and also states that Respondent has worked on NATIONWIDE UK´s behalf for five years and has secured domains for the company in the past. According to Mr. Locke, the company has accepted that it would always seek to secure a domain name that better suits the company’s brand; <nationwide.biz> is, in Mr. Locke´s view, a great improvement on the company’s current domain name <nationwider.com>.
In the letter Mr. Locke also states that his company has embarked on a research project aiming at re-branding the company and that the result will be reported to the board shortly. Furthermore, Mr. Locke indicates that ("we") did not submit an IP Claim for the domain name because it was, from the trademark experience, believed to be too generic. Finally, Mr. Locke states in the letter that his company has legitimate rights to the domain name and that it should not be transferred to Nationwide USA. However, a transfer to Nationwide Technology Recruitment PLC would be acceptable if so directed.
6. Discussion and Findings
According to Paragraph 4.a of the STOP, Complainant must, in order to obtain a decision that a contested domain name be transferred to Complainant, show that each one of the following three elements is present:
i. that the domain name is identical to a trademark or service mark in which Complainant has rights,
ii. that Respondent has no rights or legitimate interests in respect of the domain name, and
iii. that the domain name has been registered or is being used in bad faith.
In the following part of this Decision the Panel discusses those elements. Before going into the substance of the case the Panel will, however, consider the allegations by Complainants that Respondent submitted no evidence that its Response was timely submitted in compliance with the STOP Rules and that therefore the Notification of Default should be reinstated.
In this respect the Panel first notes that the Response from Respondent is dated June 3, 2002, and contains the required certification to the effect that the contents of the Response is to the best of Respondent’s knowledge complete and accurate. The Panel notes that Respondent in its e-mail to the Center on June 11, 2002, states that it sent an e-mail to the Center and to Complainants’ representative on June 3, 2002, and that there was a delay in sending hard copies due to the celebrations in the United Kingdom. Furthermore, to its Additional Response Respondent has attached a copy of the header of an e-mail to the Center concerning <nationwide.biz> dated June 3, 2002, 12.40.
When considering the circumstances present in the case the Panel concludes that the circumstances in connection with the transmission of the Response are in fact such that the Response received by the Center will have to be taken into consideration. The Panel consequently considers the withdrawal of the Notification of Default to be correct and denies Complainants’ request for the reinstatement of that Notification. In this context the Panel notes that it has certain discretionary powers as regards the proceedings and is, inter alia, according to Rule 12 of the STOP Rules, entitled to request, in its sole discretion, further statements or documents from either of the parties.
The Additional Observations and the Additional Response from Complainants and Respondent, respectively, resulting from the Administrative Panel Procedural Order of July 4, 2002, has been communicated within the time limits prescribed in that Order and will be taken into consideration by the Panel in deciding this case..
Identity of the domain name with the trademark/service mark
According to Paragraph 4.a.i. of the STOP Complainants have to prove that the domain name is identical to a trademark or service mark in which Complainants have rights.
The domain name at issue is <nationwide.biz>.
The evidence provided by Complainants shows that Complainants are the owners of a number of trademark registrations and applications for such registrations of the trademarks/service marks NATIONWIDE and "NATIONWIDE Composite" in a number of countries, more particularly the United States and Brazil and also in certain European countries, such as the Benelux countries, Germany and Italy, but as far as the material available shows, not in the United Kingdom.
The Panel finds it to be established that the domain name at issue is identical with Complainants’ trademarks/service marks as prescribed in Paragraph 4.a.i of the STOP.
Respondent’s Rights or Legitimate Interests in the Domain Name
Because of the Panel’s view of the evidence directed to bad faith registration or use (STOP Paragraph 4(a)(iii), it is not strictly necessary for the Panel to consider this ground of the Complaint, in order for the Panel to conclude that the Complaint should be dismissed. However, this is a situation where there are multiple IP claimants, and it is therefore necessary under subparagraphs 4.l.ii 2 and 3 of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the domain name.
From the evidence available in this case it appears that Respondent is a private person who is an employee and co-owner of a company under the name "Designation.Com.Ltd", which, according to the information on the website www.designation.com, is located in Reading, Berkshire, England and whose activities mainly include web, print and multimedia services to other companies. The domain name at issue has, however, been registered by Respondent in its own personal name and at its own private address and not using the name and address of its employer. Respondent has stated that it registered the domain name on behalf of the company Nationwide UK; the original intention has, according to Respondent, always been to transfer the domain name to that company.
To the Response to Complainants’ Additional Observations is attached a copy of a letter from the Managing Director of Nationwide UK, Mr. Locke, stating, inter alia, that that company attempted to obtain the domain name at issue on that company’s behalf.
Nationwide UK also operates under another – but similar - domain name, namely <nationwider.com> which website indicates on the same line as "© Copyright and Trademark Information. Terms and Conditions" also <Made@Designation.com>, which is the company where Respondent works.
The Panel finds that the evidence now available must lead to the conclusion that the Respondent acted on instructions of Nationwide UK when it registered the domain name at issue. This does not, however, change the fact that Respondent in his personal capacity is the Registrant of the domain name and that, until the submission of the letter of July 8 from Mr. Locke, it nowhere appeared that the registration was effected on behalf of Nationwide UK.
In view of the circumstances in this case and especially of the relations between Respondent and Nationwide UK, the Panel concludes that the Respondent has not sufficiently established that he, himself, has rights or legitimate interests in the domain name.
Registration or Use in Bad Faith
According to Paragraph 4.a.iii of the STOP Complainants have to prove that the domain name has been registered or is being used in bad faith.
In relation to this element Complainants have alleged basically that Respondent must have been aware of Nationwide USA’s rights to the expression NATIONWIDE, that it must be presumed that Respondent registered the domain name in order to attract, for commercial gain, Internet users to its website or another on-line location and that the registration has disrupted Complainants’ business.
Respondent has basically alleged that Nationwide UK has as much right to the generic expression NATIONWIDE as Complainants have and that Complainants and the British company in question deal with different businesses and in different geographical locations.
In the previous part of this decision the Panel has found that, while Respondent has registered the domain name at issue in his own personal name and using its own private address, the letter from Mr. Locke indicates that Respondent acted upon instructions from Mr. Locke´s company when registering the domain name at issue. That letter also states that Nationwide UK is in the process of making research for re-branding of the company and that no IP Claim was filed because it was believed that the notion "NATIONWIDE" was too generic.
When considering what has now been referred to concerning the evidence available in this case and especially what has been submitted on the relations between Respondent and Nationwide UK, the Panel can not find it to be sufficiently established that Respondent registered the domain name in bad faith or that it has used the domain name in bad faith in the sense of the STOP.
In conclusion, the Administrative Panel finds it to be established that the domain name at issue is identical with Complainants’ trademarks/service marks. It has not been established that Respondent has rights or legitimate interests in the domain name. Finally, it has not been established that Respondent has registered the domain name or used it in bad faith.
On the basis of the foregoing considerations, the Administrative Panel denies Complainants’ request for transfer of the domain name <nationwide.biz>
The Administrative Panel decides that, according to Paragraph 4.l.ii.3 of STOP, subsequent challenges under the Policy against the domain name <nationwide.biz> shall be permitted. Such challenges under this Policy may, however, not be brought by the same Complainants.
Dated: July 9, 2002