WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bourchier Nominees Pty Ltd v. COMPETITIVE INSURANCE SOLUTIONS PTY LTD ATF TRUSTEE FOR THE BRUCE FAMILY TRUST

Case No. DAU2017-0037

1. The Parties

The Complainant is Bourchier Nominees Pty Ltd of Subiaco, Western Australia, Australia, represented by Williams + Hughes, Australia.

The Respondent is COMPETITIVE INSURANCE SOLUTIONS PTY LTD ATF TRUSTEE FOR THE BRUCE FAMILY TRUST of Mirrabooka, Western Australia, Australia, internally represented.

2. The Domain Name and Registrar

The disputed domain name <bruceinsurance.com.au> (the “Disputed Domain Name”) is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2017. On November 28, 2017, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On November 29, 2017, Web Address Registration Pty Ltd 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 December 22, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2018. The Response was filed with the Center on January 9, 2018.

The Center appointed John Swinson as the sole panelist in this matter on January 15, 2018. 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

The Complainant is Bourchier Nominees Pty Ltd, a company based in Western Australia which provides insurance brokering services. In 2005, the Complainant commenced trading as Bruce Insurance Brokers after purchasing the Stan Bruce Insurance Brokers business which was founded in 1987. According to the Complaint, the Complainant re-branded as Bruce Insurance in 2008 and claims unregistered trade mark rights in BRUCE INSURANCE (the “Trade Mark”) from at least that date.

The Complainant owns Australian trade mark number 1320964 which was registered on September 16, 2009 for the following stylised mark with device:

(the “Device Trade Mark”).

The Respondent is COMPETITIVE INSURANCE SOLUTIONS PTY LTD ATF TRUSTEE FOR THE BRUCE FAMILY TRUST, a company based in Western Australia and the registered owner of the Disputed Domain Name. The Respondent also provides insurance brokering services.

The Disputed Domain Name was registered on January 23, 2016. At the time of this decision, the Disputed Domain Name resolves to a website which featured the Respondent’s branding and provided information about the Respondent and its Managing Director, Adam Bruce, and included a contact form.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

Since re-branding to Bruce Insurance in 2008, the Complainant has been known in the industry by the Trade Mark. The Complainant also relies on the Complainant’s rights in the Device Trade Mark which was registered in 2009.

For the purposes of comparing the Disputed Domain Name and the Trade Mark, the inclusion of the generic Top-Level Domain (“gTLD”) “.com.au” should be disregarded.

The Disputed Domain Name is identical to the Trade Mark as the Disputed Domain Name incorporates the Trade Mark in its entirety.

Further, the Disputed Domain Name is confusingly similar to the Device Trade Mark. The omission of the descriptive tag-line “Good to Know” from the Disputed Domain Name is insufficient to avoid confusion.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Respondent is not commonly known by the Disputed Domain Name and so may not claim any rights established by common usage. The Respondent is Competitive Insurance Solutions Pty Ltd.

The Respondent’s only connection to the Disputed Domain Name is that the surname of the Respondent’s sole director is “Bruce”, which cannot be said to bestow upon the Respondent legitimate rights in the Disputed Domain Name in circumstances where the Respondent has chosen to trade using an entirely distinct and unrelated name, “Competitive Insurance Solutions”.

The Respondent does not own any trade marks for BRUCE INSURANCE and has not registered any company or business names which contain the Trade Mark. The Respondent has not built any reputation or goodwill in the Trade Mark.

The Respondent’s use of the Disputed Domain Name to divert website traffic to a website bearing an entirely distinct and unrelated business name and advertising similar goods or services which compete with that of the Complainant does not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services or form a legitimate noncommercial fair use of the Disputed Domain Name.

The Respondent is using the Disputed Domain Name to further a misconception that it is the Complainant, the services provided under the Trade Mark are the Complainant’s services and that the Respondent, and the services it provides, is affiliated with, sponsored, endorsed or associated with the Complainant.

Registered or Used in Bad Faith

The Respondent registered, has used, and is continuing to use the Disputed Domain Name in bad faith.

The Respondent knew, or ought to have known, about the existence of the Trade Mark at the time of registering the Disputed Domain Name. Prior to the Respondent’s registration of the Disputed Domain Name, the Complainant had been using the Trade Mark for over 11 years and had registered rights in the Device Trade Mark for more than 5 years.

The Respondent registered and used the Disputed Domain Name for the purposes of disrupting the business of a competitor.

The Respondent has demonstrated bad faith use by using the Disputed Domain Name to direct Internet traffic to a webpage featuring the entirely unrelated trading name of the Respondent, and providing services which compete with or are identical to those provided by the Complainant. This is evidence of the Respondent’s attempt to attract, for commercial gain, Internet users to its website at the Disputed Domain Name, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website. The result of the Respondent’s use is that potential consumers are misdirected from the Complainant’s website to the Respondent’s website.

On or about July 5, 2017, the Complainant sent a letter to the Respondent putting the Respondent on notice that the Respondent’s use of the Disputed Domain Name infringes the Complainant’s rights in the Trade Mark. The Respondent has refused to cease using the Disputed Domain Name.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Complainant and the Respondent share the same surname. The insurance industry is reliant on the personal relationships that an insurance broker has with both the insurer and customers. Although insurance brokers have company and trading names, the name of the individual broker remains important.

The Disputed Domain Name only contains part of or a variation of the Device Trade Mark. The Disputed Domain Name does not use the words of the Device Trade Mark in its entirety.

There have been no instances of actual confusion where any insurer or customer of the Complainant has contacted the Respondent via the website at the Disputed Domain Name.

Rights or Legitimate Interests

The Respondent has never attempted to divert, mislead, or deceive any customers in any way. This is supported by the absence of any evidence of actual confusion during the two years that the Disputed Domain Name has been active and registered to the Respondent.

Further, the Disputed Domain Name does not direct Internet traffic to a home page, but a webpage explaining who Adam Bruce, the sole director of the Respondent, is. This makes it clear to Internet users who exactly they have contacted. The Respondent has no intention of interfering with the Complainant’s rights in the Device Trade Mark.

The Complainant’s argument that the Respondent is not commonly known by the Trade Mark is abolished by the fact that the Complainant’s full name is Competitive Insurance Solutions Pty Ltd ATF Bruce Family Trust. There is more than only a tenuous connection with the family name Bruce and the Respondent as the Disputed Domain Name is held by The Bruce Family Trust.

The Respondent’s legitimate purpose in registering and using the Disputed Domain Name is to assist its existing customer base and divert Internet traffic to find the Respondent on the Internet. This is a bona fide offering of goods and services. The legitimacy of the Respondent’s interest in these circumstances, in light of its name, is no less legitimate than that of the Complainant.

Registered or Used in Bad Faith

The Disputed Domain Name was not registered and has not been used / is not being used in bad faith.

The Respondent and the Complainant share the same surname and both have equal rights to use their surnames. The Disputed Domain Name is registered to The Bruce Family Trust which is an insurance brokerage that is clearly relevant to the Disputed Domain Name. The family name of the Respondent’s sole director, Adam Bruce, is an important aspect of how a client would look to locate either the business or the key staff within the business.

The Respondent is not attempting to trade in the specific name of Bruce Insurance or to take business directly from the Complainant as a competitor. The Disputed Domain Name directs to an “about us” page which clearly outlines details of where the Internet user has been directed. There are also no examples of actual confusion by any customers or disruption to the Complainant’s business.

The Respondent is actively using the Disputed Domain Name for legitimate and justified reasons, without any attempt to mislead customers for commercial gain or with a view to making a profit from reserving the registration of the Disputed Domain Name.

In its many years of trading, the Complainant has had ample time and financial means to acquire the Disputed Domain Name but has never chosen to.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered or has subsequently been used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of these elements.¹

A. Identical or Confusingly Similar

Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.

The Complainant claims unregistered or common law trade mark rights in the BRUCE INSURANCE (the “Trade Mark”). In order to successfully assert unregistered or common law trade mark rights for the purposes of the Policy, the Complainant must show that the Trade Mark has become a distinctive identifier which consumers associate with the Complainant’s goods or services (i.e., that the Trade Mark has acquired a “secondary meaning” (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant has provided evidence of its use of, and the reputation it has developed in, the Trade Mark. For the purposes of the Policy, the Panel is satisfied that the Complainant has acquired common law rights in the term “BRUCE INSURANCE” in Western Australia, by virtue of its use as a trade mark. While the Complainant claims use of the Trade Mark from 2008, the earliest evidence provided in the Complaint is dated 2013 which in any event precedes registration of the Disputed Domain Name by about three years.

The Panel considers that the Disputed Domain Name is identical to the Trade Mark. The Trade Mark has been incorporated into the Disputed Domain Name in its entirety with no change or further terms added.

In addition, the Panel considers that even if the Complainant had not established common law rights, it has rights for the purpose of paragraph 4(a)(i) of the Policy by virtue of its ownership and use of the Device Trade Mark. The Device Trade Mark features a stylised letter “B”, along with the stylised text BRUCE INSURANCE, with the text GOOD TO KNOW following on a separate line.

Generally, as design elements are not capable of being represented in a domain name, these elements of a trade mark can be ignored for the purpose of assessing identity or confusing similarity (see section 1.10 of the WIPO Overview 3.0; also see, e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031). The design elements of the Device Trade Mark are not such that the Device Trade Mark is incapable of distinctiveness without these elements.

The Panel considers that the dominant and distinctive element of the Device Trade Mark is the term BRUCE INSURANCE. As such, the Panel finds that, for the purposes of the Policy, the Disputed Domain Name is confusingly similar to the Device Trade Mark.

In this case, the gTLD “.com.au” is irrelevant in assessing confusing similarity under the Policy and may be ignored.

In light of the above, the Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Panel accepts the Complainant’s submission that the Respondent has not been commonly known by the Disputed Domain Name or the Trade Mark, and has no registered or common law trade mark rights in a name or Trade Mark which is similar to the Trade Mark. Despite the Respondent’s claims to having a connection to the name “Bruce”, the Panel finds that the Respondent has not been using the personal name as a trademark-like identifier in trade or commerce. In respect of its goods and services, the Respondent trades under the name “Competitive Insurance Solutions”, a wholly distinct identifier from the Disputed Domain Name and Trade Mark. The fact that the Respondent’s full corporate entity name, COMPETITIVE INSURANCE SOLUTIONS PTY LTD ATF TRUSTEE FOR THE BRUCE FAMILY TRUST, contains the name “Bruce” is irrelevant because the Respondent does not trade under this name, so is not commonly known by this name, and in any case, this name does not closely reflect the Disputed Domain Name so as to confer rights or legitimate interests.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website associated with the Disputed Domain Name resolves to a webpage about the Respondent and how to contact the Respondent. It provides the Respondent’s trading name, logo, and information about how the Respondent is providing services which are similar to those provided by the Complainant. The website is almost identical to the Respondent’s website at the domain name <competitiveinsurance.com.au>. Given the Respondent is clearly not trading under the Trade Mark, this is not a bona fide use of the Disputed Domain Name under the Policy. While the Respondent’s business appears to be legitimate, the Panel disagrees with the Respondent’s assertions that Internet users would clearly see that the website at the Disputed Domain Name is not related to the Complainant. The Panel considers that the Respondent’s use of a Disputed Domain Name which bears no resemblance to the Respondent’s trading name but is identical to the Trade Mark of a competitor does not confer rights or legitimate interests on the Respondent.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website at the Disputed Domain Name is clearly for commercial purposes as the Respondent is using it to advertise its services.

- The Panel accepts the Complainant’s submission that the Complainant has not licensed or otherwise authorised the Respondent to use the Disputed Domain Name or Trade Mark.

The Respondent has failed to rebut the prima facie case of bad faith established by the Complainant.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith. While the Policy sets out instances of bad faith registration and use, these circumstances are not exhaustive.

The Respondent uses a domain name which does not reflect its own company or trading name or trade mark, but which exactly reflects the Complainant’s trading name. The website at the Disputed Domain Name appeared to be almost identical to the Respondent’s primary business website at the domain name <competitiveinsurance.com.au>. As intended by the Respondent, the likely effect of the Respondent’s registration and use of the Disputed Domain Name, was to attract Internet users to the Respondent’s website at the Disputed Domain Name to promote the Respondent’s business. While the Panel accepts that the Respondent is operating its own legitimate business and may not have any malicious intent or bad will towards the Complainant, the Panel considers that Internet users would be directed to the Disputed Domain Name through a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website at the Disputed Domain Name (see paragraph 4(b)(iv) of the Policy).

Further, the Respondent claims that the legitimate purpose for registering and using the Disputed Domain Name is so that existing and prospective customers can locate the Respondent online. However, the evidence shows that searching Google using the terms “bruce + insurance” only finds results related to the Complainant and not the Respondent. No results relate to the Respondent’s website at the Disputed Domain Name despite these terms making up the entirety of the Disputed Domain Name. This suggests that the Respondent is not known by the Trade Mark.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

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 Disputed Domain Name, <bruceinsurance.com.au>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 29, 2018

¹1. The Panel notes that the Policy is largely based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), and accordingly the Panel will refer to its jurisprudence where instructive.