WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency)
Case No. D2000-1228
1. The Parties
The Complainant is Clerical Medical Investment Group Limited of 15 St James Square, London SW1Y 4LQ, United Kingdom ("Clerical Medical").
The Respondent is Clericalmedical.com (Clerical & Medical Services Agency) of PO Box N-8188, Suite 205, Bank Lane, Saffrey Square, Nassau, Bahamas ("CMC").
2. The Domain Name and Registrar
The domain name at issue is clericalmedical.com and the Registrar is Network Solutions Inc of 505 Huntmar Park Drive, Hendon, Virginia VA20170, USA.
3. Procedural History
Complaint was submitted by email on September 15, 2000, and a hard copy followed on September 18, 2000. The relevant notification procedures were complied with, and a minor amendment to the complaint was subsequently submitted by email on September 25, 2000, with a hard copy following on September 27, 2000, at the request of the Center to comply with the necessary formality.
No response has been filed either before the appointed deadline, or subsequently. Notification of default has been sent to the Respondent.
The Complainant requested a panel of three, and the three panelists have duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The date scheduled for the Panelís decision is November 27, 2000. The language of the proceedings is English.
4. Factual Background
Clerical Medical is a life insurance company established in 1824. At that time it was intended to serve the needs of members of the medical profession and the clergy, but it has gone on to become a well-known and significant provider of life insurance services and other investment products. Although originally a UK based business, it has recently expanded significantly overseas, and asserts that overseas business now generates a quarter of new business for the company.
Clerical Medical has a number of trademark registrations both in the United Kingdom, and more widely around Europe, Hong Kong and South Africa.
The domain name at issue, clericalmedical.com, was registered in August 1998, from an address in Nassau, the Bahamas.
In June 2000, Eversheds, a UK solicitors acting on behalf of Clerical Medical, wrote to CMC at the given address in the Bahamas raising its concerns over the name and requesting either a transfer of the domain name, or the details upon which CMC claims to be entitled to have and use the name.
In default of a reply, a chasing letter was sent on July 11, 2000, and this was followed by an email dated August 14, 2000, setting a deadline, failing which a complaint would be lodged.
5. The Partiesí Contentions
Clerical Medical contend that the domain name in question is identical or confusingly similar to its trade mark or trading name; that CMC has no right or legitimate interest in respect of the domain name; and that the domain name has been registered and is being used in bad faith.
Clerical Medical assert that the domain name Clericalmedical.com is identical to their registered trade mark "Clerical Medical" in which they assert that they have a substantial reputation, not just in the United Kingdom, but worldwide.
Clerical Medical contends that CMC has no legitimate interest in the domain name, alleging that there is no evidence of any use or preparation for use in the two years since the name was registered. They have produced evidence to demonstrate that there is not even the indication of a "site under construction".
Further, Clerical Medical assert that there is significance in the fact that the registry entry for the domain name in question lists the proprietor as "Clericalmedical.com (Clerical & Medical Services Agency)". They assert that this might give rise to a belief that there was a company with a bona fide offering of goods and services. However, a detailed search both against the given name, and the name "Fernhead Property Holdings" which appears in the registry entry, has yielded no information concerning a legitimate business being transacted under the name "Clerical & Medical Services Agency".
In relation to the issue of bad faith, Clerical Medical draw the Panelís attention to Case D2000-0003 (Telstra) and the wording of the UDRP paragraph 4(b) which indicates that the instances of bad faith specifically set out in that sub-paragraph are "without limitation" and that other evidence of bad faith may be raised.
Clerical Medical then set out the basis on which they allege bad faith has occurred in this case, pointing out that the name "Clerical Medical" is well-known, and cannot have been beyond the contemplation of CMC at the date of registration.
It further asserts that the failure of CMC to respond to communication by Clerical Medicalís representatives is further evidence of bad faith.
Clerical Medical further assert that CMC was in breach of Clause 5 of its registration agreement with Network Solutions, and that breach of that agreement has been held in the past to constitute bad faith for the purposes of the UDRP.
Finally, in relation to continuing use in bad faith, Clerical Medical points to the failure to acknowledge pre-complaint communications, failure to post any content or give any indication of intended use of the domain name, and the assertion that "it is not possible to conceive of a plausible way in which the Respondent could legitimately use the domain name."
There has been no communication from the Respondent, either formally or informally to the pre-complaint communications by Clerical Medical, or in response to the notification of the complaint.
6. Panel Findings
Under paragraph 4 of the UDRP, the Complainantís burden is to prove, in relation to the complaint, that:
(i) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements are present in order to make out a successful case.
The first question to be considered is whether the domain name clericalmedical.com is identical or confusingly similar to a trademark or service mark in which Clerical Medical has rights.
The Panel quite clearly finds that this limb of the test is satisfied. It is quite clear that the ".com" element of the domain name is to be ignored for the purpose of assessing similarity. Accordingly, the Panel finds that the domain name is identical to various registered trademarks belonging to Clerical Medical, and consequently the question of confusion does not arise.
The second leg of the test requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in respect of the domain name. This is a case where the Respondent clearly has no obvious connection with the domain name (apart from having registered it), and indeed where the domain name has been dormant for a significant period of time (2 years). In those circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist. In the absence of any communication of any nature from CMC, the Panel has no difficulty in concluding that the second leg of the test is satisfactorily made out.
Finally, the Panel has to consider the question of the domain name having been registered and used in "bad faith". In this case, the "sign posts" to bad faith, helpfully set out in paragraph 4(b) of the UDRP, are not relevant. However, as Clerical Medicalís representatives correctly point out, the four factors listed in paragraph 4(b) are not exclusive but merely intended to assist the parties in establishing the strengths or weaknesses of their position.
There is no question that the trading name Clerical Medical is well known in the financial services sector. The Panel is persuaded that its reputation is international in nature.
It is simply inconceivable that, in 1998, by sheer coincidence, an individual or business conceived of the merits of providing services to the clergy and the medical profession in a way which provided justification for the registration of the domain name at issue. The original decision to adopt a business of that type in 1824 took place in very different circumstances and the business itself has now expanded to a full service financial business.
The Panel considers that this is sufficient in itself to demonstrate that the registrant was fully aware of the existence and significant reputation of the Complainant at the date of registration. In all the circumstances, and in the absence of any evidence from the Respondent, which might counter the assumption, the Panel finds that the domain name was registered in bad faith.
As to its use in bad faith, it is becoming an established principle of this procedure under the UDRP that merely holding an infringing domain name without active use, can constitute use in bad faith. That, allied with the failure to respond to communications and the assertion by Clerical Medical, with which the Panel agrees, that "it is not possible to conceive of a plausible way in which the Respondent could legitimately use the domain name" is conclusive to the Panel of continuing use in bad faith.
It is particularly pertinent that the respondent shows no sign of being an active business. The failure to respond to any communication might lead to the conclusion that a false identity has been provided to the registrar, which would be a clear indicator of bad faith.
Accordingly, the Panel finds that the domain name clericalmedical.com was registered and is being used in bad faith.
In the light of the foregoing, the Panel decides that the domain name registered by CMC is identical to the registered trade marks of Clerical Medical; that CMC has no rights or legitimate interest in respect of this domain name, and that the domain name in issue has been both registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name clericalmedical.com be transferred to Clerical Medical.
Gordon D Harris
Dated: November 28,2000