WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Britannic Assurance PLC v. MIC
Case No. D2000-1516
1. The Parties
The Complainant in this administrative proceeding is Britannic Assurance plc, a company having a principal place of business at 1 Wythall Green Way, Wythall, Birmingham, England, B47 6WG.
The Respondent in this Administrative Proceeding is MIC, whose Administrative Contact is Syed Hussain, with address at 15 5th Street, Closter, New Jersey, 07624, United States of America.
2. The Domain Names and Registrar
The domain names are as follows:
The Registrar is bulkregister.com, 7 East Redwood Street, Third Floor, Baltimore, MD , 21202, USA.
3. Jurisdiction and Related Matters
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), Paragraph 3(b).
The Administrative Panel consisting of one member was appointed on December 28, 2000 by WIPO.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
4. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 22, 2000 by email and on November 3, 2000 by hardcopy. The Center dispatched to the Registrar a Request for a Registrar Verification on November 14, 2000. On November 23, 2000, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by December 13, 2000. The Respondent did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
5. Factual Background
The Complainant is the registered proprietor of the following trade marks:
BRITANNIC ASSURANCE registered in the UK on 22 August 1997 in respect of class 36 for insurance, assurance and financial services.
BRITANNIC ASSURANCE (as a word and device mark) registered in the UK on 22 August 1997 in class 36 as aforesaid.
BRITANNIC registered in the UK on 22 August 1997 in class 36 as aforesaid.
BRITANNIC DIRECT registered on 18 November 1999 in class 36 as aforesaid.
They are all valid and subsisting.
The Complainant is also the registrant of various domain names including <britannicassurance.com>, <britannic-direct.com>, <britannic-online.com>, <britannicadvice.com>, <britannicadviser.com>, as well as various country code top level domains incorporating the Complainantís trade marks, such as britannic-direct.co.uk, britannic.co.uk and britannic-assurance.co.uk.
The Complainant is a long established business in the area of insurance, assurance and financial services. It was founded in 1866 as the British Workmenís Mutual Assurance Company. Since then it has grown to become a major supplier in the United Kingdom market of life insurance, pensions and savings products and services.
The principal activities of the Complainant and its subsidiary undertakings are the transaction of life assurance and certain classes of general insurance business. All business is transacted in the United Kingdom. Its products are distributed by a direct sales force of about one thousand eight hundred professionally qualified financial advisers. The Complainant is a member of the Association of British Insurers and the Insurance Ombudsman Bureau. In the latest annual report of the Complainant for the financial year ended December 1999, profit after tax of £117.7million is shown on the non-technical account.
The Complainant uses the trade marks throughout the United Kingdom in relation to its business. It is advertised widely and promoted and is well known in the United Kingdom in the area of insurance, assurance and financial services.
The Complainant advertises its services through national newspapers, television commercials and the trade press having circulation throughout the United Kingdom.
On February 3, 2000, the Complainant issued a joint press release with Cornhill Insurance plc publicising its forthcoming provision of insurance services over the Internet under the trade mark BRITANNIC DIRECT.
The business under the trade mark BRITANNIC DIRECT was launched April 1, 2000 and there have since been home contents and motor insurance sales each month. Sales to date have been through telesales alone, although a web site quotation facility will be available at the year-end under the Complainantís domain name Britannic-Direct.com. Subsequent to the press announcements, the Complainant carried out extensive advertising in connection with its launch of insurance services under the mark.
Under the formal agreement between the Complainant and Cornhill Insurance PLC, each party has agreed to contribute a minimum sum of £250,000 per annum towards advertising. Cornhill Insurance PLC have been licensed to use the trade mark BRITANNIC DIRECT in connection with this venture.
On the same day that the Complainant issued its press release, the Respondent registered the subject domain names, as well as <britannicdirect.co.uk>.
After instructing Farncombe International (a firm of enquiry agents) to find out the identity of the registrant of the subject domain names, the Complainant wrote to the Respondent on April 12, 2000 for the purposes of ascertaining why he had registered the domain names in issue.
On or around April 25, 2000, Ms. Anna East, the company secretary of the Complainant, received a telephone call from a person purporting to be "SJ Hatch".
Mr "Hatch" claimed he was in the process of setting up a textile business in South Africa under the domain names <britannicdirect.co.uk> and <britannicdirect.com>. Mr "Hatch" confirmed that his call been prompted by the April 12, 2000 letter and indicated a willingness to sell the subject domain names, but left the price open.
In response, the Complainantís authorised representatives wrote to Mr "Hatch" on June 30, 2000 offering a total of $300 US dollars for the subject domain names. On July 14, 2000, a telephone message was left by Mr "Hatch" with the Complainantís representatives declining the offer.
The Complainantís representatives endeavoured to contact Mr "Hatch" by telephone without success. A further letter was sent on July 18, 2000. The Respondent subsequently telephoned Mr. Luke Kempton, an associate of the Complainantís representatives on July 21, 2000. Mr Kempton was told by the Respondent that he was developing a web portal site which would give access for United Statesí customers to United Kingdom web sites under the domain name britannicdirect and that the offer of $300 was unacceptable. The Respondent refused to provide any information to substantiate this claim. He also admitted that there was no Mr Hatch at CPIC.net.
On August 1, 2000, the Complainantís representatives wrote to the Respondent increasing the original offer to $1,500.
On October 2, 2000, the Complainantís representative in these proceedings, Cerryg Jones, spoke to the Respondent. The Respondent indicated that he would sell the subject domain names for a low to medium six figure sum. He further confirmed that he had registered the subject domain names because he had seen ".. an opportunity" and that it was a "catchy name". The Respondent also claimed that he had registered them for the purpose of setting up a web site where there would be a "few hundred retail sites" listed, the purpose being allegedly to provide a one stop shopping forum on the Internet for United Kingdom retail sites. The Respondent also stated that he would issue proceedings in the United States alleging "harassment" in the event that ICANN ruled in the Complainantís favour which would delay the transfer for two or three years.
The following day, a letter was sent by the Complainantís representative by email and post to the Respondent, setting out relevant aspects of that conversation and confirming the Complainantís intention to refer the matter to WIPO. As at the date of filing the complaint in this proceeding, no response was received.
6. Partiesí Contentions
The Complainant relies on its use and registration of its name and marks and says that the subject domain names are identical to the Complainantís mark Britannic Direct and confusingly similar to its trading name Britannic Assurance.
It is contended that the Respondent has no rights or legitimate interest in the subject domain names when compared to the history of the Complainantís use and the actions of the Respondent.
The Complainant states that those actions also show that the Respondent registered and has used the subject domain names in bad faith.
In addition, the Complainant notes that the Respondent has been found to have acted in a number of similar domain name dispute cases.
The Respondent made no submission in this proceeding.
7. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
ii) the Respondent has no legitimate interest in respect of the domain name;
iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to a number of decisions of domestic courts. While they often are very helpful, they are not determinative in an ICANN domain dispute proceeding.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear on the evidence that the Complainant has rights to its service mark Britannic Direct and that the subject domain names are virtually identical to it. The only difference is the addition of .com, .org and .net and the absence of a space between the words "britannic" and "direct". The subject domain names also clearly are confusingly similar to the Complainant trading name "Britannic Assurance".
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondentís Legitimate Interest
The timing of the Respondentís registration suggests the absence of any legitimate interest in the subject domain names. It has made no commercial use of them and offered different stories as to its intentions. In this proceeding no explanation has been given.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The Complainant offered to pay amounts which realistically reflected amply any legitimate expenses that the Respondent may have incurred in registering the subject domain names. This was rejected by the Respondent. Its suggestion that a six figure amount was required has no basis for support as a proper demand under the Policy. This conduct gives rise to an implication of evidence of bad faith.
The evidence is that the Complainant was contacted by persons using names different from that of the Respondent, but always in response to communications from the Complainant to the Respondent. The Respondent has not denied that these contacts either were him or on his behalf. The Administrative Panel is satisfied that the actions were those of the Respondent.
Previous analagous conduct can have evidentiary value in considering the conduct of a party. In this case, the Administrative Panel takes it into account as corroborative of the other evidence of bad faith and in the absence of any explanation by the Respondent, concludes that the registration and use of the subject domain names were in bad faith.
Based on the evidence and the findings of fact, the Administrative Panel concludes that the Complainant has established its case under paragraph 4(a). It seeks transfer of the subject domain names to it.
The Administrative panel so orders.
Edward C. Chiasson, Q.C.
Dated: January 15, 2001