WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hay & Robertson International Licensing AG v. Admiral Insurance Services Ltd

Case No. DBIZ2002-00254

 

1. The Parties

The Complainant is Hay & Robertson International Licensing AG, a company incorporated in Switzerland. The contact address provided for the Complainant is Bahnhofstrasse 6, CH-7250 Klosters, Switzerland.

The Respondent is Admiral Insurance Services Ltd, located at Capital Tower, Greyfriars Road, Cardiff, South Glamorgan, CF10 3AZ, United Kingdom.

 

2. The Domain Name and Registrar

The contested domain name is <admiral.biz> which is registered with the registrar, Melbourne IT D/B/A Internet Names Worldwide located at Level 2, 120 King Street Melbourne Victoria 3000 Australia.

 

3. Procedural History

The electronic version of the Complaint was filed on May 21, 2002. The hardcopy of the Complaint was received on May 22, 2002.

In accordance with Paragraph 4(a) of the Start-up Trademark Opposition Rules for .BIZ (the "STOP Rules"), the WIPO Arbitration and Mediation Center ("the Center") verified that the Complaint satisfies the formal requirements of the the Start-up Trademark Opposition Policy for .BIZ ("the STOP Policy"), and the WIPO Supplemental Start-up Trademark Opposition for .BIZ Rules ("Supplemental Rules").

Payment in the required amount was received by the Center.

The Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

The Respondent filed an electronic copy of a Response on May 29, 2002. A hard copy of the Response was received on May 30, 2002.

The Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On July 11, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 25, 2002.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the STOP Rules; the Response was filed in accordance with the requirements of the STOP Rules and Supplemental Rules; the administrative Panel was properly constituted.

 

4. Factual Background

The Complainant owns trademark registrations for "ADMIRAL" in relation to sportswear in a number of jurisdictions including the United Kingdom and Spain.

The Respondent is in the business of insurance and owns trademark registrations for "ADMIRAL" in the United Kingdom.

The Respondent has registered the domain name <admiral.biz>.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

(a) it owns trademark registrations for "ADMIRAL" throughout the world, including in the United Kingdom and Spain, and that the Complainants rights in the trademark "ADMIRAL" go back to 1914;

(b) "ADMIRAL" is a well known brand for sportswear, especially for soccer clothing and leisure wear. More information about the Complainantís business and the "Admiral" brand can be found at two of the Complainantís websites: "http://www.admiralcanada.com" and"http://www.admiralsoccer.com";

(c) the domain name is identical to the "ADMIRAL" trademark;

(d) to the Complainantís knowledge, the Respondent has no trademarks, patents, designs or other intellectual property rights containing the word "ADMIRAL"; and

(e) the Complainant has no rights or legitimate interest in the domain name.

B. Respondent

The Respondent contends that:

(a) it owns registered trademarks for "ADMIRAL" (for both text and image and text) in the United Kingdom;

(b) it has been trading under the brand name "Admiral" since 1993 and the "Admiral" brand has become well known in the United Kingdom in the area of insurance;

(c) the Respondent has provided over 15.5 million quotes (for insurance) to potential customers and has sold 1.6 million policies since 1993;

(d) the Respondent is ranked third as a recognised provider of motor insurance;

(e) the Respondent owns the domain name <admiral.com> and uses this website in marketing activity;

(f) it has legitimate interests in the domain name and the domain name is registered in good faith for use with the Respondentís existing business; and

(g) since the Complainant does not own either <admiral.com> or <admiral.co.uk> and by its own admission trades through web addresses such as admiralcanada.com and admiralsoccer.com the Complainantís case should fail.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the STOP Policy, as approved by ICANN on May 11, 2001, namely:

(a) the domain name is identical to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered or is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical to a trade mark or service mark

The Panel finds that the domain name is identical to the ADMIRAL trademarks registered by both the Complainant and Respondent, apart from the generic ".biz" identifier. The addition of the generic identifier ".biz" does nothing to deflect the impact of the viewer of the "image" mark.

6.2 Illegitimacy

The onus of proving absence of rights or legitimate interest in a disputed domain name is on the Complainant.

The Complainant has failed to prove that the Respondent has no legitimate rights or interest in the domain name. To the contrary, the Respondent is a well known and legitimate insurance company, operating under the brand name "Admiral". It has long standing registered trademarks for "Admiral". The Respondentís website "http://www.admiral.com" describes the Respondentís services and is indicative of how the disputed domain name may be used. It is clear that the Respondent has legitimate rights or interest in the disputed domain name, therefore the Complainant fails on this ground.

6.3 Bad Faith

The Complainant has not alleged any bad faith by the Respondent, nor has the Complainant provided any evidence of any bad faith. The Complainant fails on this ground. The Panel is puzzled as to why the Complainant filed this Complaint in light of the complete lack of bad faith and in view of the strong legitimate interests of the Respondent.

 

7. Decision

For the reasons set forth above, the Panel decides that the Complaint fails, and that pursuant to paragraph 15(e) of the STOP Rules, no further challenges be permitted in respect of the disputed domain name.

 


 

John Swinson
Sole Panelist

Dated: July 22, 2002