WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UK lnsurance Limited v. PrivacyDotlink, Customer 28001 118 / Futureproof Domains
Case No. D2017-1584
1. The Parties
Complainant is UK lnsurance Limited of Leeds, United Kingdom of Great Britain and Northern Ireland, represented by Sipara, United Kingdom ("United Kingdom").
Respondent is PrivacyDotlink, Customer 28001 118 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Futureproof Domains of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <directline.group> (the "Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 21, 2017, the Registrar 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 Complainant on August 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 25, 2017.
The Center verified that the Complaint together with 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 20, 2017.
The Center appointed John C. McElwaine as the sole panelist in this matter on September 29, 2017. 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 a United Kingdom insurance company that was the first to sell automobile insurance over the telephone. Complainant owns a number of trademarks in Australia, the European Union, the United Kingdom and the United States of America, containing the marks DIRECT LINE, DIRECT LINE GROUP and DIRECTLINE.COM for, among others, Class 36 insurance services. The earliest of Complainant's trademarks was registered in 1994. Complainant is also owner of the <directlinegroup.com> domain name.
The Domain Name was registered by Respondent on June 8, 2016. The Domain Name resolves to a form webpage offering the Domain Name for sale.
5. Parties' Contentions
Complainant was founded in 1985 and claims to be the first company to sell insurance over the telephone thereby cutting out the middleman. Complainant alleges to own a portfolio of registered trademarks in the European Union and United Kingdom including the marks DIRECT LINE, DIRECT LINE GROUP and DIRECTLINE.COM for Class 36 insurance services. Collectively, these DIRECT LINE and DIRECT LINE GROUP registered marks attached to the Complaint at Annex 4 are referred to as the "DIRECT LINE Mark".
Since its launch, Complainant claims to have grown the DIRECT LINE Mark to be recognized as a "superbrand" in the Consumer Superbrands 2016 publication. Complainant alleges further that it is the fifth largest general insurer and number one private and domestic motor insurer in the United Kingdom. Complainant's annual revenues have risen from GBP 1.0 billion in 2010 to GBP 3.2 billion in 2016. Complainant asserts that its DIRECT LINE Mark has been used extensively on the Internet, in newspapers, on television as well as other forms of media, including a popular recent advertising campaign run with Harvey Keitel.
Complainant also alleges that on May 23, 2017, counsel for Complainant sent a letter demanding that the Domain Name be transferred to Complainant. Complainant provided a copy of an email sent to counsel for Complainant later that day under the moniker "Name Your Website" purporting to be a response to Complainant's May 23, 2017 letter. The email refused to transfer the Domain Name, instead counter-offering two options:
"1. You can purchase this name for the small sum of $500 (£380) though the uniregistry marketplace - the domain is automatically transferred into your account upon payment. Click here for this option. OFFER ONLY AVAILABLE FOR 7 DAYS - THE PRICE WILL RISE BY 100 PER DAY AFTER THIS.
2. You can file a UDRP to ICANN for the large sum of $1500 (£1154) and you may or may not win the name. Also this can take weeks to process and much more in legal fees for your client. Furthermore there is a zero percent chance of your client taking me to court and recouping any of the fees spent on this because I am 15 years old and live in the Philippines."
With respect to the first element of the Policy, Complainant alleges that it has registered numerous trademarks consisting of the DIRECT LINE Mark in many jurisdictions throughout the world for insurance services. Complainant also points out that it is the registrant of the <directlinegroup.com> and <directline.com> domain names. Complainant contends that the Domain Name is visually and aurally highly similar to the Domain Name. Complainant points out that use of the new generic Top-Level Domain ".group" is likely to cause confusion because Complainant uses the DIRECT LINE GROUP mark, which is identical, and the Domain Name is very similar to the registered rights in Complainant's DIRECT LINE mark.
With respect to the second element of the Policy, Complainant asserts there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's DIRECT LINE Mark. Complainant alleges that the Domain Name links to an inactive website that was registered in the hope and expectation of attracting traffic from Internet users searching for information about the business activities of Complainant.
With respect to the third element of the Policy, Complainant asserts that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. In addition, after receiving contact from counsel for Complainant, Respondent refused to transfer the Domain Name to the Complainant unless a monetary exchange of USD 500 was agreed by Complainant.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the DIRECT LINE Mark as evidenced by its trademark registrations and its long-standing use of the DIRECT LINE and DIRECT LINE GROUP marks in connection with insurance services.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.3, the consensus view is that "[w]here the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD ".mark" and a mark "TRADEMARK", the domain name <trade.mark> would be confusingly similar for UDRP standing purposes)." Applying this view, the Domain Name is identical to Complainant's trademark rights in its DIRECT LINE GROUP mark. See Totaljobs Group Limited v. Faisal Khan, CreativeMode Ltd., WIPO Case No. D2017-0295 (finding the domain name <total.jobs> confusingly similar to complainant's TOTALJOBS mark).
In addition, it is well established that the addition of a descriptive word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Here, Respondent has used and registered the word "group" referencing its collection of companies in connection with its core mark DIRECT LINE. Thus, confusion between the Domain Name and the DIRECT LINE mark is also likely.
Based upon the foregoing, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends there has never been a relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent's rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
First, Respondent is not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c)(i). When Respondent registered the Domain Name, Complainant had decades of established rights in the DIRECT LINE Mark. Second, as discussed above, Respondent is not known by the name "Direct Line" or "Direct Line Group." Instead, Respondent claims to be a domain name investor operating under the moniker "Name Your Website." Finally, the Domain Name resolves to an inactive webpage. Passive holding of a domain name incorporating a third party well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.
Complainant has made a prima facie showing of Respondent's lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
As an initial matter, paragraph 4(b)(i) of the Policy indicates that bad faith exists where a respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Here, the evidence establishes that after receiving a letter from counsel for Complainant identifying Complainant's trademark rights, Respondent made an offer to sell the Domain Name for USD 500 and threatened to raise its monetary demand by USD 100 every day thereafter. To apply even more pressure on Complainant, Respondent claimed to be a minor located in the Philippines implying that the costs of any proceedings would never be recovered. The Panel finds bad faith registration and use under paragraph 4(b)(i) of the Policy.
In addition, paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with 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. See Diamond Hill Investment Group, Inc. v. Carole Elkins, supra, citing Avon Products, Inc. v. Domains Administrator c/o Dynadot Privacy; see also Ebay Inc. v. Wangming, WIPO Case No. D2006-1107. With a domain name being passively held, however, the question of bad faith use is more difficult. The three member panel, in Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries,
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name,
(iv) the respondent did not reply to the complainant's communications before the proceedings, and
(v) the respondent did not reply to the complainant's contentions.
Similarly, in this matter, Complainant has a well-known mark that is registered in multiple countries. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Name. In fact, Respondent is not using the Domain Name in any manner to demonstrate a bona fide use or potential use, and instead, offered to sell the domain name to Complainant for an exorbitant amount. In light of these factors, the Panel finds that Respondent's passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <directline.group> be transferred to Complainant.
John C McElwaine
Date: October 10, 2017