WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnia Assicuratrice Linear S.p.A. v. WhoisGuard, Inc. / Eric Chastain
Case No. D2019-1397
1. The Parties
The Complainant is Compagnia Assicuratrice Linear S.p.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is WhoisGuard, Inc., Panama / Eric Chastain, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <linear.ink> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received three email communications from the Respondent on June 27 and 29, 2019. The Complainant filed an amended Complaint on July 2, 2019.
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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties on July 31, 2019, that it would proceed to panel appointment.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 14, 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
The Complainant is an insurance company located in Bologna, Italy. The Complainant was incorporated in July, 1995 and began using the trademark LINEAR in association with direct sales of motor vehicle insurance policies via telephone and internet. These insurance services have been offered through its website at “www.linear.it”. The domain name <linear.it> was registered on May 31, 1996 and has been used continuously since that time.
The Complainant owns the following trademark registrations for the mark LINEAR:
Italian Trademark Registration No. 1181078 for LINEAR registered January 7, 1999;
European Union Trademark Registration No. 013019179 for LINEAR registered July 31, 2015.
The Complainant also owns the following domain name registrations:
<linear.biz> (registered May 12, 2005);
<linear.eu> (registered November 18, 2006).
The Complainant’s business has reached a level of “renown and notoriety in the insurance industry in the Italian territory”.
The disputed domain name <linear.ink> was registered on January 15, 2019, and at the time the Complaint was filed it resolved to a parking page.
5. Parties’ Contentions
The Complainant submits that it owns registered trademark rights in the mark LINEAR by virtue of the Italian and European registrations listed in section 4 of this decision. The disputed domain name <linear.ink> replicates the Complainant’s registered trademark in its entirety except for the addition of the Top-Level Domain (“TLD”) “.ink”. The addition of the TLD designation does not distinguish the disputed domain name from the Complainant’s trademark. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the LINEAR trademark.
The Complainant also submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not known to the Complainant which/who has never authorized him to register or use the Complainant’s registered trademark. The Complainant contends that the Respondent used the disputed domain name in association with a pay-per-click site which featured links to third parties which were in direct competition with the Complainant’s automobile insurance business. This use does not constitute a bona fide offering of goods and services under the Policy. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
Lastly, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has registered a confusingly similar domain name in association with a pay-per-click website which until recently has resolved to third party sites in direct competition with the Complainant’s business for purposes of monetary gain. Whether the Respondent directed the disputed domain name to do so or not does not matter, the fact remains that the Respondent is using the confusingly similar domain name <linear.ink> to direct Internet users seeking the Complainant’s website to the Respondent’s website. The Complainant submits that the Respondent must have known about the Complainant’s trademark and insurance business, even though the Complainant is located in Italy, and must have known that the parking page would be directed to websites that were competitors of the Complainant, which would ultimately generate income.
The Respondent did not file a formal reply to the Complainant’s contentions, but he did offer an explanation of his conduct in an email response dated June 29, 2019. The Respondent submitted that he registered the disputed domain name for a “reasonable and innocent purpose”, namely to produce “an art blog about inking line drawings”.
The Respondent furthermore said in his reply that he was “irritated that namecheap profits of my unused domain names with those ridiculous landing pages anyway after I've already purchased a domain from them so I'm happy to change it, I just hadn't gotten around to doing so and the algorithm they use is obviously causing problems…”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in LINEAR by virtue of the Italian and European Union trademark registrations listed in section 4 above.
The Panel finds that the disputed domain name <linear.ink> is confusingly similar to the Complainant’s trademark, as the disputed domain name replicates the Complainant’s LINEAR trademark except for the addition of the TLD designation “.ink”. The addition of the TLD designation does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file a formal response in these proceedings. However, the Respondent did submit an email dated June 29, 2019, in which he states that he purchased the disputed domain name to be used in association with an art blog, specifically about inking line drawings such as comic book inking. The Respondent further stated that he was unaware that the disputed domain name was providing links to other sites relating to insurance companies for monetary gain. He asserts that he had no intention to compete with any insurance companies. The Respondent further states that he still intends to use the disputed domain name in association with ink drawings, but has not yet had an opportunity to set up the website, in the 6 months since registration.
The panel accepts the email from the Respondent as part of the evidentiary record in this proceeding.
As the Amended Complaint states, the Respondent resides in the United States and the Complainant’s business is conducted in Italy. The Panel notes that the Complainant did not submit evidence of use or reputation in the United States, which would have been helpful in establishing the claim that the Respondent would have known about the Complainant. In the absence of such evidence, the Panel finds that the Complainant has not established that the Respondent was actually aware, or likely to be aware of the Complainant’s trademark and insurance business.
The Panel also notes that the TLD designation “.ink” was designed at least to support a digital hub for the artistic, and cultural medium of tattooing. The choice of TLD is consistent with the Respondent’s contention that he registered the disputed domain name to be used in association with an art blog about inking line drawings.
The disputed domain name was registered only 6 months prior to the Complaint and the Panel has no reason to doubt the Respondent’s contention that he registered the disputed domain name for an innocent purpose, and has not yet developed the blog site that he plans.
Once the Complaint was amended to disclose the Respondent’s identity, the Complainant ought to have identified additional evidence relating to Respondent and his activities, in order to support the inferences the Complainant seeks to draw from the parking page associated with the disputed domain name. The only significant update in the evidence confirms that the Respondent terminated the pay-per-click function on his website, when the Complaint was brought to his attention. This is consistent with the Respondent’s explanations.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the facts set out above in section 6.B, the Panel finds that the Complainant has not established, on the balance of probabilities, that the Respondent registered the disputed domain name in bad faith, or in a manner that otherwise represents an abusive registration. In particular, the Panel takes notice of the explanation set out in the Respondent’s email response of June 29, 2019, and the following factors:
(1) The Respondent’s location in the United States, where the Complainant has not carried on business, and where it has not provided any evidence of reputation or trademark registrations;
(2) The Respondent’s explanation of his “reasonable and innocent purpose” to use the disputed domain name for an art-related blog about comic book art, and inking line drawings;
(3) The absence of any evidence that the Respondent was targeting the Complainant to seek to sell the disputed domain name;
(4) The absence of any evidence from the Complainant about the Respondent’s profile, character or prior conduct that would support an inference of bad faith in the circumstances; and
(5) The prompt action by the Respondent to remove the pay-per-click landing page generated by the Registrar, once notice of the Complaint in this case was received.
Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: August 28, 2019