WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB

Case No. D2012-2366

1. The Parties

The Complainant is Old Republic Home Protection Co., Inc. of San Ramon, California, United States of America, represented by Claytor Law Group, PC, United States of America.

The Respondent is Direct Privacy ID 7F9AB of Metairie, Louisiana, United States of America.

2. The Domain Name And Registrar

The disputed domain name <oldrepublichomewarranty.com> is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2012. On November 30, 2012, 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 confirming that the Respondent is listed as the registrant and providing the contact details. In response to a rectification request by the Center, the Complainant filed an amendment to the Complaint on December 6, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2012.

The Center appointed Gary J. Nelson as the sole panelist in this matter on January 10, 2013. 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

Old Republic International Corporation is the owner of at least two United States Trademark Registrations for logos combining the words "Old Republic" with a design element. Specifically, Old Republic International Corporation owns at least the following trademark registrations:

The disputed domain name appears to have been registered on January 15, 2004. The operational website at <oldrepublichomewarranty.com> resolves to an active website that offers commercial click-through opportunities to websites that appear to be related to the home warranty industry, among others.

5. Parties’ Contentions

A. Complainant

Old Republic International Corporation owns service mark rights in OLD REPUBLIC.

Complainant is a wholly owned subsidiary of Old Republic International Corporation, and has the explicit consent of Old Republic International Corporation to use the OLD REPUBLIC service mark.

Complainant has been authorized by Old Republic International Corporation to use the trade name Old Republic Home Protection Co., Inc.

Old Republic International Corporation established service mark rights in OLD REPUBLIC prior to the date Respondent registered the disputed domain name.

The disputed domain name <oldrepublichomewarranty.com> is confusingly similar to the OLD REPUBLIC service mark owned by Old Republic International Corporation.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

For over twenty five (25) years, Complainant has been engaged in the business of offering home warranties to consumers under its corporate name Old Republic Home Protection Co., Inc., and is licensed to do business in forty six (46) states in the United States.

Complainant owns and operates an Internet website at “www.orhp.com”. Complainant registered the <orhp.com> domain name on July 15, 1998.

Complainant's trade name, and the <orhp.com> domain name enjoy an excellent reputation and Complainant has built up valuable goodwill in both the trade name and the domain name.

Complainant has extensively promoted its Old Republic Home Protection Co., Inc. trade name, the OLD REPUBLIC service mark, and its <orhp.com> domain name through the use of a variety of forms of advertising. As a result, Complainant's trade name, the OLD REPUBLIC service mark and the <orhp.com> domain name have become widely known among members of the public throughout the United States as a source of home warranty plans, distinguish Complainant's services from the services of others, and have each acquired a secondary meaning.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion And Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in 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

Registered Service Mark Rights

The Complainant has established that Old Republic International Corporation owns at least one United States trademark registration for the OLD REPUBLIC service mark. See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive).

However, the Complainant has failed on the provided record to establish that it owns rights in the OLD REPUBLIC service mark pursuant to Policy, paragraph 4(a)(i), or that it has the right to use the OLD REPUBLIC service mark.

The Complainant expressly identifies the owner of the subject mark of United States Service Mark Registration No. 1,826,586 as a separate operational legal entity, Old Republic International Corporation.

While the Complainant asserts that it is a wholly owned subsidiary of Old Republic International Corporation and that Complainant has the explicit consent of its parent to use the OLD REPUBLIC service mark, it has provided no evidence whatsoever to support these allegations. Under these circumstances, the Panel can only conclude that, if the Complainant does indeed have the explicit consent of the owner of the OLD REPUBLIC service mark to use this mark, then documentary evidence of the alleged permission would be readily available. Moreover, despite the assertions set forth in the Complaint, the Panel concludes that mere attorney argument is not evidence and is insufficient to establish the truth of the allegations presented.

Indeed, Complainant has provided no evidence of its relationship to the established owner of the OLD REPUBLIC service mark, nor has it asserted that it owns other valid service mark registrations for OLD REPUBLIC, and the Panel finds no other evidence amongst the documents filed by the Complainant to suggest that it owns registered service mark rights in OLD REPUBLIC.

Common Law Service Mark Rights

The Complainant also does not allege that it owns common law service mark rights in OLD REPUBLIC.

The Complainant does, however, allege that it has been engaged in the business of offering home warranties to consumers while using its trade name Old Republic Home Protection Co., Inc. for twenty five years, but fails to allege that it has been using OLD REPUBLIC as a service mark during this time period.

Complainant owns and operates a website at <orhp.com> where it arguably uses OLD REPUBLIC as a service mark on its website. However, Complainant fails to indicate when it began to use OLD REPUBLIC as a service mark and, therefore, has failed to allege a proper priority claim relevant to the date the disputed domain name was registered.

Complainant does identify two previous UDRP decisions which indicate that Complainant had sufficiently proven that it had explicit consent from Old Republic International Corporation to use the OLD REPUBLIC service mark. See Old Republic Home Protection Co. Inc. v. Lena Hawkins, WIPO Case No. D2010-0213; Old Republic Home Protection Co., Inc. v. WhoisGuard Protected/MAJAS, Adrejs Lisments, WIPO Case No. D2010-1294.

In regard to these two cases published back in 2010, the Panel can only assume that Complainant did indeed submit evidence sufficient to establish that Old Republic International Corporation had explicitly granted Complainant the right to use the OLD REPUBLIC service mark. Accordingly, the Panel is left wondering why the Complainant did not simply submit the same documentary evidence in this case, if Complainant continues to enjoy the same permissions it enjoyed back in 2010.

Because the Complainant has failed to prove on the provided record in these proceedings that it owns service mark rights in OLD REPUBLIC, or that the owner of the OLD REPUBLIC service mark has consented to its use of the mark, the issue of whether the disputed domain name <oldrepublichomewarranty.com> is confusingly similar to the service mark rights owned by Old Republic International Corporation, is moot.

The Panel therefore finds that Complainant has failed in this particular case to prove the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Because the Complainant has failed to prove the requirement of Policy, paragraph 4(a)(i), as described above, the issue of whether Respondent has rights or legitimate interests in the disputed domain name <oldrepublichomewarranty.com> is moot.

C. Registered and Being Used in Bad Faith

Because the Complainant has failed to prove the requirement of Policy, paragraph 4(a)(i), as described above, the issue of whether Respondent registered and is using the disputed domain name <oldrepublichomewarranty.com> in bad faith is moot.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gary J. Nelson
Sole Panelist
Date: January 11, 2013