WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Lewis plc v. John Westlake, Apex Insurance

Case No. D2010-1123

1. The Parties

The Complainant is John Lewis plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Amy Dhillon, UK.

The Respondent is John Westlake, Apex Insurance of Eastleigh, Hants, UK.

2. The Domain Name and Registrar

The disputed domain name <johnlewisinsurance.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010.

The Center transmitted its request for registrar verification to the Registrar on July 7, 2010. The Registrar responded the same day, confirming that the Domain Name was registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on January 10, 2011, had been placed on Registrar Lock and would remain locked during this proceeding subject to scheduled expiration, and that the registration agreement was in English. The Registrar also provided the full contact details held in respect of the Domain Name on its WhoIs database. The Registrar stated that it had not yet received a copy of the Complaint and did not dispute that the registration agreement contained a jurisdiction submission as required by ICANN.

The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 1, 2010.

The Respondent sent emails to the Center on July 16, 2010, and another date, making the points noted below, but did not submit a formal response. The Center replied by email on July 28, 2010, noting that the due date for the Response was August 1, 2010, and informing the Respondent that, unless advised otherwise by that date, the Center would treat his two emails as the Response and would proceed to appoint the Panel. The Center also advised the Respondent to contact the Complainant directly for any possible settlement negotiations.

The Center appointed Jonathan Turner as the sole panelist in this matter on August 17, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is a national retailer in the UK which has used the mark JOHN LEWIS since it was established in 1864. It now has 33 department stores operating under the name “John Lewis” across the UK. It also uses JOHN LEWIS as a brand for a broad variety of goods and services which its sells in its retail business, including insurance products for consumers such as car insurance, home insurance, travel insurance, pet insurance, wedding insurance, event insurance, life cover and specialist home insurance. It has used the mark for insurance products in conjunction with the sub-brand “Greenbee” since October 2006 and its sales of insurance products in 2009 totalled nearly £19 million.

The Complainant has registered JOHN LEWIS as a Community Trade Mark for a wide variety of goods and services.

The Respondent is an insurance consultant with a website at “www.apex4insurance.co.uk”. The Domain Name was directed to this website prior to April 20, 2010 when the Complainant sent a cease and desist letter to the Respondent. The latter replied on April 28, 2010, stating that he had asked his web support company to disconnect the link. The Complainant wrote to the Respondent again the same day, asking whether he had a preference on the process for transferring the Domain Name and the corresponding <.co.uk> domain name to the Complainant.

The Complainant subsequently wrote to the Respondent on May 10, 2010, stating that the process was different for the two domain names and giving details of what needed to be done to transfer them. The Complainant set a chasing letter on May 27, 2010, and a further letter threatening to submit the dispute to Nominet and the WIPO Center on June 22, 2010. The Respondent replied on June 22, 2010, stating that he had the matter in hand and had just been on leave. He said that he had written to Fasthosts asking for advice on how to deal with the matter and confirmed that he was no longer using the web address.

The Complainant replied on June 23, 2010, stating that it did not understand the delay, that it had already given details of what needed to be done to effect the transfer, and that the legal process would be instituted unless the Complainant received an appropriate update by 5pm on June 25, 2010.

The Domain Name has been disconnected from the Respondent’s website at “www.apex4insurance.co.uk” but is now directed to a web page which displays links to other websites promoting insurance services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to its registered trade mark JOHN LEWIS, which it incorporates in its entirety.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points out that the Respondent uses the name “Apex Insurance” or “Apex Insurance Services” in connection with his offering of goods or services. It notes that there is no evidence of the Respondent’s use of or demonstrable preparations to use the Domain Name or any corresponding name before any notice of the dispute. The Complainant adds that the Respondent is not commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the Domain Name. On the contrary, according to the Complainant, the Respondent is using the Domain Name with intent for commercial gain misleadingly to divert customers to his own business website.

The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent must have been aware that the Complainant is a national retailer whose trademark, JOHN LEWIS, is extremely well-known. The Complainant submits that, having regard to the Respondent’s direction of the Domain Name to his business website, it can only be concluded that the Respondent registered the Domain Name for the purpose of attracting the Complainant’s customers or prospective customers to that website, and that the Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website.

Although the Domain Name has now been disconnected from the Respondent’s business website, the Complainant alleges that the Respondent is continuing to use it in bad faith to profit from confusion with the Complainant’s mark through click-through commissions on the links displayed on the web page to which it is now directed.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent states that he has stopped using the Domain Name on the Complainant’s request and has been in contact with the Complainant sorting the problem out. He says that he was shocked to receive the emails relating to the Complaint, and that he is happy to transfer the Domain Name to the Complainant.

The Respondent states that he is an insurance consultant and that the Complainant is a retailer which does not specialize in insurance. The Respondent says that he would like to know why the Complainant needs his Domain Name.

The Respondent asserts that there are many other businesses with “John Lewis” in their title and asks whether the Complainant is attempting to close them all down and whether this is fair.

According to the Respondent, the Domain Name is of some value to him and he asks whether the Complainant is happy to make an offer for the right to it.

Finally the Respondent points out that his business is small, with three staff, and that he is unfamiliar with this kind of problem. He asks for help in dealing with it.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

These are cumulative requirements and it is therefore necessary to consider each of them in turn.

A. Identical or Confusingly Similar

The Panel finds on the undisputed evidence that the Complainant has registered rights in the mark JOHN LEWIS.

The Panel further finds that the Domain Name is confusingly similar to this mark. The Domain Name consists of the mark together with the descriptive word “insurance” and the generic top level domain suffix. As has been recognized on many occasions, a domain name consisting of a widely used mark together with a descriptive word is inherently likely to be confused with the mark. It is also well-established that the generic top level domain suffix should be discounted for the purpose of the comparison.

The Panel is satisfied that many Internet users in the UK would assume that the Domain Name was registered and used by the Complainant to promote its insurance services. The possibility that Internet users would realize on accessing the Respondent’s web page that it is not a website of the Complainant is irrelevant since it is clear that for the purpose of this requirement the comparison which must be made is between the disputed domain name and the complainant’s mark, without regard for the content of any website or web page to which the domain name is directed: see Travellers Exchange Corporation Limited v. FairFX Plc, WIPO Case No. D2010-1056.

The first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

The Panel finds on the evidence that the Respondent had not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute. On the contrary, the Panel considers that the Respondent used the Domain Name in bad faith to divert Internet users seeking information about the Complainant’s insurance services to his own business website promoting his services as an insurance consultant, by means of the confusing similarity of the Domain Name to the Complainant’s widely known mark.

It is evident from the file and not disputed that the Respondent is not commonly known by the name. It is also clear that the Respondent is not making legitimate non-commercial or fair use of the Domain Name. On the contrary, the Respondent is using it for commercial gain misleadingly to divert consumers seeking a website of the Complainant to the Respondent’s web page and previously his business website.

The Panel is satisfied that there is no other basis on which the Respondent could claim to have any right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

The Panel finds on the evidence that the Respondent has used the Domain Name intentionally to attract Internet users originally to his business website and, following the Complainant’s objection, to a web page displaying sponsored links, by creating a likelihood of confusion with the Complainant’s mark as to the source of this website and web page.

The Panel further finds that this was done for commercial gain – in the case of the business website, the attraction of potential customers for his insurance services; in the case of the web page, click-through commissions on sponsored links. This is hardly disputed by the Respondent, who acknowledges in his emails in response to the Complaint that the Domain Name has some value to him.

In accordance with paragraph 4(b)(iv) of the UDRP, these findings constitute evidence of registration and use of the Domain Name in bad faith. There is no evidence in the file which could displace this presumption. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.

7. Decision

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, <johnlewisinsurance.com>, be transferred to the Complainant.

Jonathan Turner
Sole Panelist
Dated: August 18, 2010