National Arbitration Forum
Churchill Insurance Co. Ltd. v. Churchhill Financial Services, Ltd.
Claim Number: FA0906001270466
Complainant is Churchill Insurance Co. Ltd. (â€œComplainantâ€), represented by James A. Thomas, North Carolina, USA. Respondent is Churchhill Financial Services, Ltd. (â€œRespondentâ€), 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. Oâ€™Connor as Chair.
This decision is being rendered in accordance with ICANNâ€™s Uniform Domain Name Dispute Resolution Policy (the â€œPolicyâ€), the Rules for Uniform Domain Name Dispute Resolution Policy (the â€œRulesâ€), and the National Arbitration Forumâ€™s UDRP Supplemental Rules (the â€œSupplemental Rulesâ€).
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 ICANNâ€™s Uniform Domain Name Dispute Resolution Policy (the â€œPolicyâ€).
On July 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the â€œCommencement Notificationâ€), 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 Respondentâ€™s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
On July 22, 2009, the National Arbitration Forum granted Respondentâ€™s July 20, 2009 Request for Extension of Time to Respond to Complaint with Complainantâ€™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 Complainantâ€™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 Respondentâ€™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 Respondentâ€™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. Oâ€™Connor as Chair.
The National Arbitration Forum received Complainantâ€™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 â€œCHURCHILLâ€ (the â€œMarkâ€). 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 (â€œRBSâ€), 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 â€œCHURCHILLâ€ mark, including registrations in the United Kingdom Intellectual Property Office (â€œUKIPOâ€) since 1997 and the EU Office for Harmonization in the Internal Market (â€œOHIMâ€) since 1998. Complainant uses the â€œCHURCHILLâ€ 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 Complainantâ€™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 â€œCHURCHILLâ€ mark, Complainant has built up substantial goodwill in and rights to this mark.
Furthermore, Complainantâ€™s rights in its â€œCHURCHILLâ€ 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) (â€œAs 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)â€); 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 â€œCHURCHILLâ€ mark by virtue of its registration of the mark with the UKIPO).
The Domain Name is confusingly similar to Complainantâ€™s Mark because it fully incorporates Complainantâ€™s Mark, and merely adds an additional letter, â€œh,â€ followed by the top-level domain name extension, â€œ.com,â€ which does not make the Domain Name distinct. Complainantâ€™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 Complainantâ€™s Mark.
Further, the intentional misspelling of a mark (by the substitution, addition or subtraction of a letter) is generally known as â€œtyposquatting,â€ which is â€œdesigned to catch Internet users who inadvertently make a typographical errorâ€¦when trying to type a domain name.â€ 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 Complainantâ€™s mark â€œCHURCHILL,â€ because â€œthe disputed domain name is a common misspelling of the Complainantâ€™s mark, arrived at by adding the letter â€œhâ€ to Complainantâ€™s protected mark. Such a practice is typically referred to as â€˜typosquatting.â€™â€ FA 912323 (Nat. Arb. Forum Mar. 21, 2007). Accordingly, the Panelist concluded that the domain name <churchhill.info> was confusingly similar to the Complainantâ€™s â€œCHURCHILLâ€ mark. In the present case, Respondentâ€™s Domain Name also merely adds an â€œhâ€ to Complainantâ€™s mark â€œCHURCHILL.â€ Like the <churchhill.info> case, Respondentâ€™s misspelling of Complainantâ€™s Mark constitutes typosquatting, rendering the Domain Name confusingly similar to Complainantâ€™s Mark.
Respondentâ€™s misspelling of Complainantâ€™s Mark within the Domain Name therefore does not negate the confusing similarity of the Domain Name to Complainantâ€™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 â€œirrelevant in distinguishing the disputed domain name from Complainantâ€™s mark because all domain names require a top-level domainâ€).
Additionally, Respondentâ€™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 Complainantâ€™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 Complainantâ€™s â€œCHURCHILLâ€ mark, or any variation thereof, in the Domain Name or otherwise.
There is no indication that Respondent is commonly known by the name â€œchurchhillâ€ 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 registrantâ€™s name as â€œChurchill Financial Services, Ltd.â€ 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 â€œChurchill Financial Services, Ltd.,â€ 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 Respondentâ€™s Representative, stating that he represented the registrant, at which time the WHOIS information continued to identify the registrant as â€œChurchill Financial Services, Ltd.â€ On June 26, 2009, however, during the course of the NAFâ€™s processing of the complaint, the NAF requested that Complainant amend its complaint against â€œChurchill Financial Services, Ltd.â€ 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 â€œChurchhill,â€ mirroring the Domain Name identically, rather than â€œChurchill,â€ as it had appeared prior to this date. In fact, the WHOIS information now reflects that it was â€œlast updatedâ€ 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 Complainantâ€™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 â€œChurchhillâ€ or â€œChurchill.â€ Indeed, an Internet search did not reveal any entity named either â€œChurchill Financial Services, Ltd.â€ or â€œChurchhill Financial Services Ltd.â€ 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 â€œChurchill Financial Services Ltd.â€ or â€œChurchhill Financial Services Ltd.â€ In fact, there is no evidence showing any association between Respondent and the Domain Name, and the mere presence of the name â€œChurchhill Financial Services, Ltd.â€ within the WHOIS information is insufficient to support a finding that Respondent is commonly known by the Domain Name.
Further, Respondentâ€™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, Respondentâ€™s website provided links entitled â€œGo Compare Car Insuranceâ€ and â€œCheapest Car Insurance,â€ in direct correlation to Complainantâ€™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 Complainantâ€™s well-known mark by attracting Internet users, including Complainantâ€™s current and prospective customers, to its website and redirecting them to Complainantâ€™s competitors, presumably in exchange for â€œclick-throughâ€ fees.
Respondentâ€™s â€œtyposquattingâ€ 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 Complainantâ€™s Mark, Respondent appears to be targeting Internet users who are attempting to access Complainantâ€™s site, but mistakenly misspell Complainantâ€™s Mark by typing an extra â€œh.â€ Respondent is therefore taking advantage of these usersâ€™ common mistakes to redirect them to Respondentâ€™s own website.
The Mark is a registered trademark and well known in the United Kingdom and Europe. In fact, Complainantâ€™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 Complainantâ€™s competitors, it is clear that Respondent had knowledge of the Mark and is attempting to take advantage of Complainantâ€™s goodwill. Since Respondent had actual and/or constructive knowledge of Complainantâ€™s Mark, Respondentâ€™s registration and continued holding of the Domain Name was and is in bad faith.
Respondent has used Complainantâ€™s Mark to attract to its websites Internet users interested in Complainantâ€™s goods and services, including Complainantâ€™s current and prospective customers, and then steer those users to the websites of Complainantâ€™s competitors. Such use of the Domain Name threatens to disrupt Complainantâ€™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 Respondentâ€™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 Complainantâ€™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 â€œChurch Hillâ€ with Complainantâ€™s â€œChurchill,â€ 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 â€œa difference that mattersâ€ and, accordingly, the Panel should find the Disputed Domain not identical or confusingly similar to Complainantâ€™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 Respondentâ€™s web site dated June 4, 2009, a Google search for â€œchurch hill,â€ and search results from the United State Patent and Trademark Office and the UKIPO for â€œChurchillâ€ trademarks.
C. Additional Submission â€“ 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.â€
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 Complainantâ€™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 Complainantâ€™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 Complainantâ€™s web site, web pages showing awards received by Complainant, an article relating to the notoriety of Complainantâ€™s bulldog logo, a printout of all of Complainantâ€™s UK and CTM registrations, two pages from Respondentâ€™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 Respondentâ€™s web site resolves.
D. Additional Submission â€“ 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 â€“ 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 received before 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) (â€œ[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, â€œ[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 weightâ€). The Panel admits the Response and has considered it in its decision.
The National Arbitration Forum has determined that Complainantâ€™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 Complainantâ€™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 Respondentâ€™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) (â€œThe Panel accepts Complainantâ€™s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainantâ€™s rights in the mark pursuant to Policy ¶ 4(a)(i).â€).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the â€œRulesâ€) instructs this Panel to â€œdecide 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.â€
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 Complainantâ€™s CHURCHILL mark with the only alterations being the addition of the letter â€œhâ€ and the affixation of the generic top-level domain â€œ.com.â€ Panelists Johnson & Oâ€™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) (â€œThe mere addition of a single letter to the complainantâ€™s mark does not remove the respondentâ€™s domain names from the realm of confusing similarity in relation to the complainantâ€™s mark pursuant to Policy ¶ 4(a)(i).â€); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as â€œ.netâ€ or â€œ.comâ€ 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 â€œchurchhillâ€ 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 Complainantâ€™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 Complainantâ€™s mark. See Vance Intâ€™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 respondentâ€™s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Intâ€™l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (â€œRespondentâ€™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.â€).
Further, Respondentâ€™s contention that it selected the Domain Name to represent the descriptive term â€œchurch hillâ€ is unconvincing to the Panel. The evidence submitted in support of this contention is its managerâ€™s declaration, which includes statements of fact that are not substantiated by any details and that are not corroborated by any other evidence. Respondentâ€™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 â€œchurchâ€ and â€œhillâ€) 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) (â€œIn 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.â€). <