The Complainant is Insure & Go Insurance Services Limited, Southend on Sea, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom.
The Respondent is CoverDirect Pty. Ltd., Sydney, New South Wales, Australia, represented by T K Legal, Australia.
The disputed domain name <insureandgo.com.au> is registered with NameScout Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2008. On October 16, 2008, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the disputed domain name. On October 17, 2008, NameScout Corp. transmitted by email to the Center its verification response 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
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 October 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2008. The Response was filed with the Center on November 15, 2008.
The Center appointed Michael J. Spence as the sole panelist in this matter on December 1, 2008. 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.
The Complainant is a direct provider of travel and other types of insurance operating primarily in the United Kingdom, but with some clients resident in Australia. It operates under the name “Insure and Go” and has done so since 1999, accepting Australian clients since 2003, and generating substantial profits. The Complainant has registered trade marks corresponding to the disputed domain name in the United Kingdom, the European Union, Australia and New Zealand, though all post date the registration of the disputed domain name. The Respondent is an Australian company that is one of a group of United Kingdom, Australian and New Zealand companies owned and operated by two shareholders resident in the United Kingdom, including companies that have operated in competition with the Complainant. The Respondent registered the disputed domain name on September 9, 2003 and has owned a New South Wales business name registration corresponding to the disputed domain name since 2006. The website corresponding to the disputed domain name contains links to several insurance companies that operate in competition with the Complainant, including several United Kingdom travel insurance companies.
The Complainant contends that the disputed domain name is confusingly similar to both its registered trade marks and to the unregistered trade mark by which it has been known since it began operations in 1999. It contends that, having never traded under the disputed domain name, the Respondent has no rights or legitimate interests in the disputed domain name. Further, it contends that the use of a confusingly similar domain name for the purpose of diverting trade for commercial gain constitutes bad faith.
The Respondent concedes that the disputed domain name is identical or confusingly similar to the Complainant's trade mark. It contends, however, that it has a right or legitimate interest in the use of the domain name on the basis of its corresponding business name registration. Moreover, it contends that there is no evidence of the use of the disputed domain name intentionally to divert or to disrupt trade, and that the registration could not have been in bad faith because it took place when the Complainant had no “notable trading activity” in Australia. For this reason it contends that the Complainant has failed to establish any breach of the Policy.
The Respondent concedes, and the Panel therefore finds, that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
It is for the Complainant to establish, at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name because it has never been commonly known by a name corresponding to the disputed domain name, and neither the Respondent's registered business name, nor the use of the name for a “click-through” or portal site, gives rise to a right or legitimate interest.
As for the registered business name, registration of a name does not, of itself, mean that the “respondent is entitled, at law, to use that name” as the Respondent claims. Rather the registration of a business name is a regulatory requirement for a person trading in New South Wales under a name that is not their own personal name or the name of a company (Business Names Act 2002 (NSW)). It does not give a right to the exclusive use of the name. Without more, such as some use of, or preparation to use, it, registration as a business name cannot constitute a right or legitimate interest in the disputed domain name for the purpose of the Policy.
As for the use of the name for a ‘click-through' or portal site, such use by itself does not normally give rise to a right or legitimate interest. Indeed, panel decisions such as L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche v. Register in hostingfreeweb.com, WIPO Case No. D2007-0391, establish that the use of a complainant's mark to operate a “click-through” or portal site for profit is a classic example of bad faith. Such use is therefore, of itself, insufficient to establish a right or legitimate interest in the domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.
The apparent purpose of the Respondent's use of the disputed name is to divert traffic to its site, and from there to the third party sites to which it is linked. On the basis of the panel decisions outlined in the preceding section, this would normally constitute bad faith. Intention to divert trade might be inferred from the fact that the Complainant's mark and the disputed domain name are identical and the Complainant and Respondent are in identical fields of trade and in similar markets.
The Respondent contends that the registration could not have been in bad faith because the Complainant did not have a notable trading activity in Australia at the time of the registration. There are circumstances in which this could be sufficient to rebut a finding of bad faith. In this case, however, that the owners of the Respondent and the Complainant were already competitors in the United Kingdom, that the website established at the disputed domain name contained links to United Kingdom as well as to Australian websites, and that the registration of the domain name was in the same year as the expansion of the Complainant's business to Australian clients, together suggest that the registration was intended to disrupt the expansion of the Complainant's business in Australia, and to divert trade for commercial gain.
The Panel therefore finds that the Complainant has, on balance, established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
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, <insureandgo.com.au> be transferred to the Complainant.
Michael J. Spence
Dated: December 15, 2008