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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CGNU plc –v- Tess Caffrey/WIPPYWOW
Case No D2000-0769
1. The Parties
The Complainant is CGNU plc of St Helen’s. 1 Undershaft, London EC3P 3DQ, represented by Ms Siobhan Leslie of the Complainant whose contact details are PO Box 89 Surrey Street ,Norwich, Norfolk, NR1 3DR, United Kingdom. The Respondent is Tess Caffrey, WIPPYWOW of 17 Grove Road, London E3 5TD, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is "cgnuinsurance.com". The registrar of the domain name is Register.com of 575 8th Avenue, 11th Floor, New York, NY10018, USA. Register.com have indicated that the domain name is active and is registered by Tess Caffrey, WIPPYWOW. The administrative contact is WIPPYWOW, Tess Caffrey, 17 Grove Road, London E3 5TD, United Kingdom.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center by email on July 11, 2000. An acknowledgement of receipt of the complaint was sent to the Complainant on July 14, 2000 and to the Respondent on July 21, 2000. In the latter case by email and by fax.
On August 9, 2000, Teresa Caffrey responded by email requesting a 5 day extension of time for the response. This was granted by consent. On August 15, 2000, Tess Caffrey responded by email from an address given as 19 Bunsen House, Grove Road, Bow, London UK.
On September 1, 2000, an administrative panel was appointed consisting of a sole panelist Mr Clive Thorne. Mr Thorne has completed the statement of acceptance and declaration of impartiality and independence.
In the meantime on August 30, 2000, the Complainant served by way of a "reply" an email responding to points raised by Teresa Caffrey in her response of August 15, 2000. A short supplementary reply was also served by the Complainant by email on September 1, 2000. This was followed by a short email response from the Respondent on September 3, 2000.
The Panel has considered whether to permit the exchange of emails on 30 August, 1 September and September 3, 2000, to be admitted in the case. The Panel’s decision is to admit the exchange of emails because it considers that the Complainant’s email of August 30, 2000, contains matters which are properly dealt with by way of reply. It is also mindful of the fact that an allegation of "lying" has been made by the Respondent in the response of August 15, 2000, and considers that it is proper for comment to be made upon that allegation.
4. Factual Background
The matter arises as a result of the merger which was formally announced on February 21, 2000, between CGU and Norwich Union, both of whom were very well known general and life insurance companies which are trading in the United Kingdom and internationally. CGU was itself the creation of an earlier merger between Commercial Union and General Accident. The Complainant has exhibited a joint press release dated February 21, 2000, announcing details of the merger. In its reply the Complainant draws attention to the fact that there was apparently a leak concerning the merger two days before the press release, on February 19, 2000. Apparently some of the Sunday broad sheets on February 20, 2000, published in the UK had headlines on the front page referring to the merger.
On February 21, 2000 applications were made in the United Kingdom to register the mark "CGNU" as a trade mark. The Complainant does not provide details of the trade mark applications/registrations in the complaint but states "the trade mark was registered on February 21, 2000 in the UK and other applications are pending/have been dealt". However in its reply it states that the marks have been applied for rather than granted.
It is significant that the Respondent’s domain name "cgnuinsurance.com" was created and registered on February 21, 2000, the first day of the announcement of the CGNU merger, although for the reasons stated above there was prior public knowledge from February 19, 2000 of the likelihood of a merger leading to the creation of CGNU.
5. Parties Contentions
In order to succeed in its request for an order to transfer the domain name the Complainant has to prove that each of the three elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present. These are as follows:-
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark of service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn:-
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark of service mark in which the Complainant has rights
In the complaint the Complainant states that the trade mark "CGNU" is the Complainant’s trade mark which was registered on February 21, 2000, in the United Kingdom and that other applications are pending/have been dealt with world wide. It points out that the only difference between the trade mark "CGNU" and the Respondent’s domain name is the addition of the words "insurance". The Complainant goes on to submit that in the event that the Panel does not consider the domain name "cgnuinsurance.com" to be identical to the Complainant’s trade mark it is in any event "confusingly similar".
In response the Respondent submits:-
(a) The Complainant has applied for a word only trade mark for the four letters CGNU and that the application is still pending (rather than having been granted).
(b) There is an "obvious difference" between the Complainant’s trade mark ie the word "insurance" which the respondent submits "logically negates the Complainant’s claim".
In its reply of August 30, 2000, the Complainant confirms that the application for trade mark registration of CGNU is in fact still pending, that the UK trade mark was lodged on February 21, 2000, and that a European Community trade mark application on February 19, 2000. The position therefore is somewhat different from that in the original complaint in that CGNU therefore not appear to have had at the date of the complaint valid and subsisting trade mark registrations for "CGNU".
The Complainant does however submit that the antecedent elements of CGNU, Commercial General Union (which itself was formed from a merger between Commercial Union Insurance and General Accident Insurance) and Norwich Union had traded in the insurance field for over 200 years. It is also apparent that the merged company CGNU plc has been trading as CGNU since the merger became effective. It is not disputed by the Respondent that the Complainant is known for "in the main, provision of insurance and related services". The Panel is satisfied as follows:-
(i) That although trade mark registrations have not been completed the Complainant was nevertheless prompt in making trade mark applications for CGNU on the day the merger was announced, ie February 21, 2000.
(ii) The Complainant has underlying rights in the mark CGNU at common law arising from its widespread trading using the mark "CGNU" since February 21, 2000.
It remains for the Panel to consider whether, as the Respondent puts it, the difference arising from the word "insurance" negates the Complainant’s claim. In the Panel’s view the word insurance is merely descriptive of an activity or commodity which, as it happen, is the activity taken by the Complainant. In the Panel’s view the domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name since it was registered at the time of the announcement of the merger of Commercial General Union and Norwich Union and the intention that the new company would be known as "CGNU". The Complainant does not believe that the Respondent has at any time been commonly known by the disputed domain name.
The Respondent submits that she registered the domain name "cgnuinsurance.com" with the intention of having "an informative non commercial web site providing information about the contingency guides and news for users of insurance (hence cgnuinsurance)." The site will provide information as to the statistical likelihood of various occurrences against which one might like to insure eg statistical likelihood of loss of luggage on holiday, the statistical likelihood of theft of passport on holiday, the statistical likelihood of third party theft etc. It would be a novel, interesting and informative site which if anything will compliment insurance dealers sites.
It should be noted that no evidence is given by the Respondent as to the existence and contents of this site. Further the Respondent uses the future tense in describing the site eg "it will provide information" or "will be a novel ... site". In the absence of any evidence from the Respondent supporting its plans for the site and taking into account the Complainant’s existing commercial interest in "CGNU" for insurance trading the Panel accepts that the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The domain name has been registered and is being used in bad faith.
The Complainant relies upon the fact that the domain name was registered at the same time as the announcement of the proposed merger of Commercial General Union and Norwich Union and that the domain name was acquired by the Respondent primarily for the purpose of selling or otherwise transferring disputed domain names to the Complainant for valuable consideration in excess of the domain name holder’s out of pocket costs directly relating to the domain name. It would appear therefore that the Complainant is placing reliance upon paragraph 4(b)(i) of the policy.
Paragraph 4(b) sets out circumstances which "in particular but without limitation" and which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(i) refers to
"Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of your documented out of pocket costs directly relating to the domain name."
In its response the Respondent submits that "at no time whatsoever has the Respondent approached either the Complainant or any other party offering to sell the domain name". In the absence of any evidence from the Complainant that the Respondent was seeking to sell the domain name the Panel rejects the Complainant’s submission as put.
However the Complainant also relies as evidence of bad faith on the fact that the domain name was registered at the same time ie on February 21, 2000 as the announcement of the proposed merger. In its reply the Complainant stresses that the domain name was registered coincidental with the announcement of the proposed merger between Commercial Union Insurance and Norwich Union. The implication to be drawn by the Panel is that the Respondent was seeking to obtain and take a quick commercial advantage. The issue of coincidence is not dealt with by the Respondent. In its email of September 3, 2000 it merely states "please note that the Complainant has been lying yet again".
In the absence of satisfactory evidence from the Respondent explaining and supporting its alleged reason for registering the domain name "CGNU" and taking into account the coincidence of registration of domain name on 21 February and in the absence of a satisfactory response from the Respondent to the Complainants arguments relating to the coincidence in the date of registration the Panel finds that the domain name has been registered and is being used in bad faith by the Respondent.
The one outstanding issue which is raised by the Respondent is its argument that the domain name CGNU.com may have been registered by a person in San Salvador since December 5, 1999. It goes on to argue that "the Complainant faces major problems of obtaining these domains and has sought to deprive me of my domains now realising that they are probably not going to be able to obtain all of the internet domains which are actually identicle (sic) to their own intended trade mark". Without evidence of the San Salvador registrations and the circumstances of their registration the Panel is unable to comment further on this submission.
6. Decision and Findings
The Panel finds for the Complainant and orders that the domain name "cgnuinsurance.com" be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: September 22, 2000