WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Markel Corporation v. Caribbean Online International Ltd.
Case No. D2007-1537
1. The Parties
Complainant is Markel Corporation, of Virginia, America, of United States of America, represented by McGuireWoods LLP, United States of America.
Respondent is Caribbean Online International Ltd., of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <markeldirect.com> and <markelonline.com> are registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. On October 19, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On October 19, 2007, DomainDoorman, LLC transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 12, 2007.
The Center appointed Eduardo Machado as the sole panelist in this matter on November 14, 2007. 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.
4. Factual Background
Complainant is an insurance holding company, which has established rights over the mark MARKEL through the use of such mark. Complainant has registered such mark before the United States Patent and Trademark Office (registration nš. 1,720,714) and holds other international registrations (Office for the Harmonization of Internal Markets, registration nš. 1514025).
5. Parties’ Contentions
With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that:
It has registered the MARKEL trademark before the USPTO and holds other international registrations.
The domain names <markelonline.com> and <markeldirect.com> are confusingly similar to Complainant’s trademarks.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:
A search of the PTO’s TESS database for all marks comprised of the word “Markel”, with or without design elements, did not reveal any parties who appeared to bear any relationship to Respondent.
A search of the OHIM’s CTM-ONLINE database for all marks comprised of the words “Markel”, with or without design elements, did not reveal any parties who appeared to bear any relationship to Respondent.
The name of Respondent bears no connection to the domain names that would suggest that the domain names are related to a mark or trade name in which Respondent has established rights.
A Google search for Respondent does not reveal any websites which suggest Respondent has established rights or legitimate interests in the domain names.
Complainant’s representative contacted Respondent on August 22, 2007 and again on September 21, 2007, via certified mail return receipt requested, notifying Respondent that the registration of the domain names <markelonline.com> and <markeldirect.com> were not authorized by Complainant. Respondent never responded to Complainant.
With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that:
Respondent is merely using the disputed domain names to attract third parties, such as corporate entities, who may want to advertise on Respondent’s website. These entities could plausibly assume that Complainant endorsed or is a customer of Respondent because of Respondent’s use of the identical word “Markel” in the domain. As a result, Respondent may generate unjustified revenues. Respondent is therefore illegitimately capitalizing on the trademark MARKEL. Such finding indicates Respondent’s bad faith in the registration and use of the disputed domain names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name 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 interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Since the MARKEL mark has being used for several years and given the existence of the United States of America and foreign trademark registrations for MARKEL, the Panel finds that Complainant has trademark rights in the MARKEL mark.
The Panel also finds that <markelonline.com> and <markeldirect.com> are confusingly similar to the MARKEL mark since the dominant portion of Complainant’s registered marks and of the disputed domain names is “markel.” The disputed domain names differ from Complainant’s registered MARKEL mark only in that they contain the generic words “online” and “direct”. Several prior UDRP Panels have held that the addition of a non-distinctive, descriptive or generic term like “online” and “direct” does not change the overall impression in terms of confusing similarity with a mark. “The addition of ‘my’ is not sufficient to avoid confusion.” Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007.
The Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence before the Panel that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence before the Panel that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the domain names merely provided numerous advertisements and /or sponsored links. Such use does not of itself constitute grounds for establishing rights or legitimate interests in a disputed domain name particularly where such links appear to relate at least in part to the trademark value of the domain names. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
Moreover, the disputed domain name <markeldirect.com> as of the date of this decision resolves to a page that displays links to Complainant’s competitors, that is, links for insurance companies. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, NAF Case No. 132439 (finding that Respondent’s use of complainant’s marks to divert Internet users to a website which displayed a series of links, some of which were links to sites of Complainant’s competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the circumstances enumerated above establish that Respondent has no rights or legitimate interests in the domain names at issue.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the disputed domain names in bad faith.
Complainant’s allegations of bad faith are not contested. Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location”, Policy paragraph 4(b)(iv). Respondent used Complainant’s known trademark in the insurance services to attract users to Respondents’ websites where they offered links to, amongst others, competing insurance service websites. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or of a product or service on Respondents’ websites.
At the time the Complaint was filed and at the time of this Decision, the domain names resolves to pages that offer visitors links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”). See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
The Panel finds that the circumstances enumerated above establish that Respondent registered and is using the disputed domain names in bad faith.
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 names, <markeldirect.com> and <markelonline.com> be transferred to the Complainant.
Dated: November 28, 2007