WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
esure Insurance Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-2870
1. The Parties
The Complainant is esure Insurance Limited of Reigate, United Kingdom (“UK”), represented by Keltie LLP, United Kingdom.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <esurebrokers.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2018 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 December 21, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on January 3, 2019. Attempts were made by the Center to notify the Respondent of the Complaint by electronic means and courier delivery of a hard copy of the notification. The Registrar and the Respondent Domains by Proxy at the same physical address as Registrar received an email copy of such notification. International courier DHL attempted to deliver a hard copy of the notification to the Respondent Fundación Comercio Electrónico’s registered address in Panama but was unable to complete the delivery. This often occurs because the address provided is incomplete or false.
However, a copy to this Respondent’s fax number in Panama provided by the Registrar was transmitted.
In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.
The Center appointed Paul E. Mason as the sole panelist in this matter on January 28, 2019. 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
As documented by certified copies provided in Annex 2 of the Complaint, the Complainant registered the trade mark ESURE with the European Union (Registration no. 004470423) on June 2006. It was filed in various classes of commercial activity shown on the trade mark registration form, including
“[Class] 36 Financial services; financial affairs; monetary affairs; insurance services; insurance broking and underwriting services; issuance of credit and debit cards; credit, debit and charge card services; discount card services; automated payment services; banking services; credit services; mortgage services; mortgage protection services; loan services; income protection services; information, advisory and consultancy services relating to the aforementioned services.” [emphasis supplied by this Panel]
The Panel notes that the term “broking” is the British equivalent of the American term “brokering”, i.e., acting as an insurance broker, which is generally defined as an independent insurance agent representing the buyer of insurance rather than the insurance company.
The Complainant had also registered the trade mark ESURE with the UK Trade Mark Office as Trade mark number UK00002204410 on July 30, 1999 and registered on January 14, 2000. It was extended by UK Registration No 3076709 filed on October 13, 2014 and registered on January 23, 2015. Similar to the European Union registration, it was also registered under “Class 36 Insurance services; provision of information and consultancy services relating to insurance”.
The disputed domain name was registered by the Respondent on November 26, 2018, and resolves via dynamic redirect to websites which may contain malware, and in some cases to a page containing
pay-per-click (“PPC”) links.
5. Parties’ Contentions
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(l))
According to the Complaint, at pages 6 et seq.:
“The complainant has been trading under the trade mark esure since January 2001 through the website at www.esure.com and www.esurebroker.com. In its decision in Case No DRS 01998 27 October 2004 [the UK provider] Nominet accepted that the Complainant had established rights in esure by virtue of substantial use. The following is an extract from that decision: On the basis of the evidence submitted, it is clear that the Complainant has substantial rights in the name “esure” within the meaning of the Policy”…
For purposes of clarification, the Panel in this instant case notes here that:
- It is the Expert deciding the case which was administered by Nominet who “accepted that Complainant had established rights…”; and
- The Complainant’s established rights were actually determined for the specific domain name <esured.co.uk>
Nevertheless, the Complaint in this case continues as follows:
“Since 2004, the Complainant’s business has continued to grow under the esure brand. Today esure is one of the leading and most well-known insurance companies in the UK with over one million customers in the UK and over 1,500 employees across the UK. The esure trade mark became well-known very early on as a result of nationwide television advertising. In 2016, the Complainant’s annual turnover was £301,961,258. At Annex 4 we attach true and accurate print outs and screenshots of pages from the client’s websites at www.esure.com, www.esurebroker.com and www.esuregroup.com printed on 17 December 2018. At Annex 5 we attach true and accurate copies of pages for each year between 2005-2017 printed from the website at www.archive.org/web/*/esure.com. These show that the esure trade mark appeared on the Complainant’s website continuously since 2000. […] At Annex 7 we attach a true and accurate copy of the witness statement by Nigel Gosden of esure Insurance Ltd which was submitted into recent proceedings in the UK Trade Marks Registry. The purpose of submitting this is to demonstrate the extent of the complainant’s reputation in the UK in its esure trade mark. This shows inter alia that the number of website visitors per year - as of 13 April 2017 - for the years 2014, 2016 and 2016 to www.esure.com were 2,030,187, 3,689,859 and 6,381,308 respectively.
The fame of the esure trade mark in the UK is recognised overseas including in the USA. This is evidenced, for example, by Annex 8 which comprises a true and accurate copy of an article that appeared in The New York Times on 8 March 2013 (see https://dealbook.nytimes.com/2013/03/08/british-insurer-sets-price-range-for-i-p-o/).
The Complainant submits that the Domain Name is similar to the Complainant’s Rights. The domain name <esurebrokers.com> is almost identical to the Complainant’s domain name <esurebroker.com> and is highly similar to the registered trade mark esure. In particular, it incorporates the Complainant’s registered right in its entirety. Further, the additional element <brokers> merely describes broker services e.g. insurance broker services.”
B. The Respondent has no rights or legitimate interests in respect of the domain name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
According to the Complaint, page 8,
“So far as the Complainant is aware, the Respondent does not own any registered rights in any trade marks which comprise part or all of the disputed domain name. The term “esure” is not descriptive in any way, nor does it have any generic dictionary meaning. The Complainant has not given its consent for the Respondent to use its registered trade marks in a domain name registration.”
C. The domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
According to the Complaint, pages 11 – 12:
“Paragraph 4(b) of the Policy sets out, without limitation, certain circumstances which, if found are deemed to be evidence of use and registration in bad faith. It is to be observed that whilst paragraph 4(a)(iii) requires a showing of both registration and use in bad faith paragraph 4(b) appears not to distinguish between registration and use. Nevertheless, the Complainant submits that the Respondent registered and is using the disputed Domain Name in bad faith.
As can be seen from Annex 1, the disputed Domain Name <esurebrokers.com> was registered by the Respondent on 26 November 2018. Given that the Complainant’s registered rights date back to 30 July 1999, the Complainant submits that the Respondent must have been aware of the reputation of the Complainant’s business under its ESURE trade mark at the time the Respondent registered the disputed Domain Name, at which stage the Complainant already enjoyed a reputation in its ESURE trade mark. As such, the Complainant asserts that on the balance of probability the Respondent filed the disputed Domain Name in bad faith.
Annex 9 demonstrates that the Respondent’s website points to a parking page containing PPC links to third party businesses providing insurance services. In and of itself, PPC advertising is a commercial use of a domain name and in circumstances where the core element of the disputed Domain Name is not an actual dictionary word and the PPC links relate to services protected by the Complainant’s Rights, PPC advertising in this manner must constitute use in bad faith. As such, the Complainant submits that the Respondent uses the domain name in an intentional attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship, affiliation of the website to which the Domain Name points.
Further, the Complainant submits that the Respondent has registered the domain name primarily for the purpose of selling the domain name to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. In this regard see screenshots at Annex 11 from the on-line domain name marketplace Sedo. The Domain Name is clearly listed for sale at a minimum sale price of US $500, roughly fifty times the price that the Respondent would have paid its registrar to register the Domain Name less than a year ago.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant asserts that the mere addition of the word “brokers” to the disputed domain name does not meaningfully distinguish the disputed domain name from Complainant’s trademark, but rather only heightens website traffic confusion between the two. The Complainant’s EU trademark registration in Class 36 in fact included the phrase “broking” which should have placed Respondent on notice that insurance brokerage is covered by the trademark ESURE.
Furthermore, Complainant’s own website “www.esure.com”, online since 2014 at least, as well as Complainant’s registered domain name <esurebroker.com>, should have placed Respondent on notice of similarities. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Panel therefore finds that the disputed domain name <esurebrokers.com> is confusingly similar to Complainant’s registered trademark ESURE.
B. Rights or Legitimate Interests
The Complainant having indicated it did not find any such rights or legitimate interests, and having made out a prima facie case, it is up to the Respondent to show it does have rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. As the Respondent has failed to address the Complaint in any aspect, including this one, the Panel finds that based on the case file, Respondent has no such rights or legitimate interests.
The Panel further notes that he attempted to visit the website “www.esurebrokers.com” associated with the disputed domain name. However, the Panel was unable to complete the visit, having been advised by both McAfee and Webroot internet security services that this is a risky site possibly containing malware.
C. Registered and Used in Bad Faith
The Complaint at pages 8-9 states:
“The Respondent is not using the disputed Domain Name. Attached at Annex 9 is a screenshot of the parking page to which the Domain name points. This displays several Pay-Per-Click (PPC) links. The first related link is to ‘Car Insurance’. By clicking on ‘Car Insurance’ this links to three insurance businesses, including Direct Line, an insurance broker and direct competitor of the Complainant. At Annex 10 we attach a screenshot of the page at this link. Aside from revenue generation from a PPC site, there is no evidence that the Respondent has made demonstrable preparations to use the Domain Name, nor is there any evidence that the Respondent is using the domain name in connection with a bona fide offering of goods and services. Further, the Domain Name is offered for sale at https://sedo.com/search/?language=us&keyword=esurebrokers.com and invites bids of a minimum of USD 500. At Annex 11 We attach screenshots of pages from www.sedo.com confirming that the name is for sale for a minimum offer of USD 500. Given the association between the association of the word ‘broker’ with the Claimant’s business activities, and having regard to the well-known status of the Complainant, it is inevitable that visitors to the Domain Name once resolved to an active website would mistakenly believe there to be an association with the Complainant.”
This Panel finds that Respondent (1) did not make independent use of the disputed domain name for its own legitimate commercial activities; (2) used the disputed domain name in a commercially unfair manner as a vehicle to direct Internet users to competitors via a pay-for-click (PPC) scheme; and (3) offered the disputed domain name for sale at a price well exceeding Respondent’s own out-of-pocket registration costs.
For these reasons established under well-established UDRP case precedents, the Panel finds that the disputed domain name was registered and used 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 disputed domain name, <esurebrokers.com>, be transferred to the Complainant.
Paul E. Mason
Date: January 31, 2019