The Complainant is Old Republic Home Protection Co. of San Ramon, California, United States of America, represented by Foley McIntosh Frey & Claytor, United States of America.
The Respondent is WhoisGuard Protected / MAJAS, Andrejs Lisments of Westchester, California, United States of America, of Dreilini, Latvia respectively.
The disputed domain name <oldrepublichomewarranty.net> (the “Domain Name”) is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2010. On August 3, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On the same day, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on August 6, 2010.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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”).
On August 4, 2010 the Respondent sent an email communication to the Center, requesting the Center to explain whether any action on his part was required. On the same day the Center informed the Respondent that at that moment in time, no action was required from the Respondent.
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 August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 3, 2010. 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 offers home warranties to consumers and is the subsidiary of the owner of United States trade mark registrations for OLD REPUBLIC for insurance services. The Respondent registered the Domain Name in October 2009 and at the time of the filing of the Complaint used it to link to third party providers of insurance services.
The Complainant's contentions can be summarized as follows:
For more than 25 years the Complainant has been in the business of offering home warranties to consumers under the name Old Republic Home Protection Co., Inc. It does business in 46 States of the United States of America and offers warranties over the Internet at “www.orhp.com”. The Complainant is a wholly owned subsidiary of Old Republic International Corporation, the owner of United States trade marks for OLD REPUBLIC, and is authorised to use those marks. The Complainant has extensively promoted its mark through advertising and as a result the mark had become widely known throughout the United States where it has gained secondary meaning. The Domain Name is according to the Complainant confusingly similar to its marks.
There is no evidence that the Respondent used the Domain Name in connection with a bona fide offering of goods or services prior to the dispute. The Respondent is not known by the name OLD REPUBLIC, only recently registered the Domain Name and is not using the Domain Name for non-commercial or fair purposes.
At the time of the filing of the Complaint the Respondent used the Domain Name to exhibit links to websites operated by competitors of the Complainant for commercial gain and used the Complainant's trade name at the top of the page to give the impression that the website is authorized by the Complainant. At the time of the filing of the Complaint the Respondent was intentionally attempting to attract Internet users to its website by creating a likelyhood of confusion that the website was connected to the Complainant.
The Respondent did not file a Response to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
The Domain Name consists of the registered mark OLD REPUBLIC which the Complainant is authorized to use and in which it has accrued reputation and goodwill through use in the United States. The addition of the generic words “home warranty”, reflecting the area of business in which the Complainant operates, does not serve to distinguish the Domain Name from the OLD REPUBLIC trade mark. As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
The Respondent has not filed a Response, does not appear to have any trade marks associated with OLD REPUBLIC, is not commonly known by this name and does not have any consent from the Complainant to use this name. It does not appear to have used the Domain Name for any bona fide offering of services. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s mark and services and the insurance services offered on the third party links on the website attached to the Domain Name for commercial gain.
Accordingly, the Panel finds that the Domain Name has been registered and used 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 Name <oldrepublichomewarranty.net> be transferred to the Complainant.
Dated: September 13, 2010