WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Direct Line Insurance, PLC , Linea Directa Aseguradora, S.A. v. Alan Pearce
Case No. D2003-0220
1. The Parties
The Complainants are Direct Line Insurance, PLC of Croydon, United Kingdom of Great Britain Northern Ireland, and Linea Directa Aseguradora, S.A. of Madrid, Spain; both represented by Luis Baz y Baz, Elzaburu of Madrid, Spain.
The Respondent is Alan Pearce of London, United Kingdom of Great Britain and Northern Ireland; and of Málaga, Spain.
2. The Domain Name and Registrar
The disputed domain name <lineadirectahelp.com> is registered with Ascio Technologies Inc. of Copenhagen, Denmark.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2003. On March 21, 2003, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the domain name at issue. On March 24, 2003, Ascio Technologies Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact. The Center duly verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainants, on March 25, 2003, so as to comply with Paragraph 3 (b) (xiii) of the Rules, in clarification of its Complaint, agreed "with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer the domain name <lineadirectahelp.com>, to submit to the jurisdiction of the courts at London". In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2003. A Response was filed with the Center on April 14, 2003.
The Center appointed Gunnar Karnell as the sole panelist in this matter on April 28, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Last date for a decision was set to be May 12, 2003.
4. Factual Background
The Complainants base their claim, inasmuch as is here of interest, on a substantial number of European Community trademarks as well as trademarks registered in Spain, to mention: 1) Community word marks DIRECT LINE INSURANCE 2000 and DIRECT LINE 2000 and the words DIRECT LINE in combined word and figurative marks, 2) word marks in Spain LINEA DIRECTA (also in figurative marks), DIRECT LINE INSURANCE; LINEA DIRECTA ASEGURADORA (also in figurative marks), all registrations verified in appendices to the Complaint to have been made in the time span from January 20, 1989 – December 20, 2000, whereas the registration of Respondent’s domain name took effect only on September 17, 2002. The Complainants have also submitted comprehensive material as evidence of notoriety of the trademark LINEA DIRECTA.
In this case, according to the Complaint, the Complainant Direct Line Insurance, PLC, acts as owner of the trademarks in issue.
5. Parties’ Contentions (short summary)
Direct Line Insurance PLC’s main line of business lies in the insurance sector and its principal feature is that clients can contact the company telephonically and over the Internet. The Spanish company is specialized in the sale of motor insurance over the telephone. It is 50 % owned by BANKINTER and Direct Line Insurance, PLC.
The British company, established less than twenty years ago, has presently over 5 million clients, being active in the United Kingdom, Germany, Italy, Spain, Japan and elsewhere. The Spanish company is a leader in Spain in the direct sale of motor insurance with some 550.000 clients in October 2002. Both companies enjoy a great reputation and international prestige.
The trademarks in issue "have become notorious in view of their reputation and prestige", as shown by material brought as evidence in this Administrative proceding. The mark LINEA DIRECTA is a well-known mark.
The Respondent, owner of the contested domain name, registered and uses the domain name well aware of the trademark protection enjoyed by the Complainants. In the year 2000, he insured a vehicle with the Spanish company. He had an accident in March 2002, in relation to which arose a dispute regarding the repair of the vehicle. This dispute was brought by him before the Spanish Policy Holders’ Ombudsman in September 2002, who rendered advice about how the Respondent might proceed to have any possible damages assessed under article 38 of the Spanish Insurance Contract Law. Before that, in April 2002, the Respondent had signed for a second policy with the same company, which he cancelled in October 2002 as a result of his conflict with the company. Just about a month before then, when the claim regarding the accident against the company was being processed, he registered his domain name, in order to exert pressure on the insurer.
As evidenced by recordings from his website on January 24, 2003, the Respondent, using also trademark-protected image items belonging to the Complainants and registered for the Complainants’ use, slavishly imitated the Complainants’ sites "www.lineadirecta.com" and "www.directline.com" to which the public was directed over "www.lineadirectahelp.com", thereby confusing the public. In reply to a cease and desist letter form Direct Line Insurance, PLC, acting for the Spanish company as its client, dated January 27, 2003, the Respondent wrote that he would be delighted to offer the domain name "for the sum of Euros 152.000"…"I should not be willing to give it up without sufficient financial recompense". On March 10, 2003, the Respondent still used the domain name to direct Internet users to his site, for critique of the Complainants’ business, using the domain name and copying other protected site elements to which rights belong to the Complainants.
a) Identity or confusing similarity
Complainants submit that the domain name is identical or quasi-identical with the trademark registrations for LINEA DIRECTA. The inclusion of the term "HELP" is insufficient to effect dissimilarities.
b) Rights and legitimate interests
The Respondent does not hold any rights to the trademarks for the term LINEA DIRECTA and late introduction of disclaimers on his site does not entitle him to any use of such a mark. The use of it as domain name in order to criticize the owner of the mark does not represent an offer of goods or services in good faith. The Respondent is not commonly known by the domain name. He plainly seeks to divert consumers from Complainants and to tarnish the reputation of the mark LINEA DIRECTA with the intention to profit from the prestige of the LINEA DIRECTA mark and from surfers mistakenly accessing the site when trying to locate information or help from the Complainants.
c) Use in bad faith
The Respondent’s lack of legitimate rights and interests in the domain name is in itself sufficient proof that the domain name has been registered and is being used in bad faith. He has offered to sell the domain name to Complainants. The introduction of a disclaimer on the site also shows his bad faith. The imitation of Complainants’ websites together with the use there of Complainants’ logo (a red telephone on wheels) is intended to cause confusion among surfers. The Respondent intends to divert consumers from the Complainants and to tarnish the reputation of LINEA DIRECTA with intention to profit from it. He uses the marks LINEA DIRECTA and DIRECT LINE as metatags, in order to attract surfers to the site and he creates a risk for dilusion of the marks due to the use of the domain name. Amendments included by the Respondent on his site following the cease and desist letter that he received do not give reason to consider that he has hence acted in good faith.
d) Requested remedy
The Complainants request that the Administrative Panel issue a decision that <lineadirectahelp.com> be transferred to Direct Line Insurance, PLC.
The sole aim of <lineadirectahelp.com> is to help both Complainants to improve customer service by listening to customers. Hence, the "Help" element. The Respondent’s site is a valuable source of information for those who contemplate vehicle insurance and it provides invaluable customer research and information to the Complainants. The Respondent is a non-profit organization, never having asked the Complainants for any financial recuperation in providing such assistance. "If the Complainants were genuinely helping its customers, there would be no need for sites such as "www.lineadirectahelp.com". The Respondent receives numerous e-mails thanking for help rendered by the Respondent.
6. Discussion and Findings
a) Identical or Confusingly Similar
The domain name <lineadirectahelp.com> is confusingly similar to the registered trademark LINEA DIRECTA notwithstanding the added gTLD ".com", the split between the words in the trademark and the word "help", the latter being just descriptive of what must be understood only to refer to services provided under the trademark LINEA DIRECTA.
b) Rights or Legitimate Interests
The Respondent has registered the domain name and is using it with an admitted intent to tarnish the trademark, knowing that his related activities will negatively affect the business reputation of the Complainants and thus of the owner of the trademark. Critique, such as here evidenced against the Complainants, does not reflect any rights in the meaning of the Uniform Policy or any legitimate interest to the domain name for the Respondent. A Respondent’s right or respected interest would here imply an authorization to mislead members of the public – irrespective of legal boundaries – to make arrangements in order to get connected to the Complainants via the domain name, only to find themselves tied up with the Respondent. The Respondent’s messages could easily be conveyed under another domain name than the name in issue or a similar one, avoiding such effects as mentioned, to the trademark, to the Complainants and to the public. The Administrative Panel holds the opinion that Internet shall be open for criticism by individuals against others to the extent permitted by applicable law, but it does not follow that there is a right related to such use as the one that we witness in the present case related to the trademark of another party, nor any legitimate interest in such use.
c) Registered and Used in Bad Faith
The Panel does not attach any weight to the admitted willingness of the Respondent to sell the domain name to the Complainants. It has not been shown to be related to the purpose behind the registration of the domain name. The registration of the domain name has been evidenced to have been effected and to be used primarily for the purpose of conveying messages intended to disrupt the business of the Complainants, by diverting clients from business with them while tarnishing the trademark in issue and its reputation. The Respondent misleads the public in a manner that disclaimers on the site, as introduced, will not obviate. What the Respondent has maintained about an intention to render help to the Complainants must under the circumstances be left out of account as not worthy of credibility. The Respondent must have been, and still must be, aware of the fact that his registration of the domain name must have had and continuously has the effect of preventing the owner of its mark from reflecting it in a corresponding domain name. For an insurance company to address its customers under a domain name indicating a "help-service" is a matter of particular interest to the company. The Respondent has used this fact to turn it against the trademark owner. he has offered no credible explanation about any "help" to visitors to his site. He must have understood that such help, if any, that he has mentioned to have given to the Complainants will obviously have been unwanted. The case is clearly one of Respondent’s registering and using his domain name in bad faith.
d) Requested remedy
The Complaint has been submitted by both Complainants with the expressed wish that transfer of the domain name in issue be effected to the Complainant Direct Line Insurance, PLC, owner of the concerned trademark registrations.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lineadirectahelp.com> be transferred to the Complainant Direct Line Insurance, PLC.
Date: April 30, 2003