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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CGNU PLC v. commercialunion
Case No. D2000-1529
1. The Parties
The Complainant in these administrative proceedings is CGNU PLC, St Helen's, 1 Undershaft, London EC3P 3DQ, United Kingdom.
The Respondent is commercialunion, Harbiye, Istanbul, Marmara 80750, Turkey.
2. The Domain Name and Registrar
The domain name in dispute is <commercialunion.net>.
The Registrar with which the domain name is registered is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on November 7, 2000 by e-mail and on November 8, 2000 in hardcopy. The Center acknowledged receipt thereof on November 15, 2000.
On November 23, 2000 the Center sent the corresponding Request for Registrar Verification in connection with this case to Network Solutions Inc., after it had sent same on November 17, 2000 to Register.com which had advised on
November 22, 2000 that it was not the proper registrar of <commercialunion.net>. On December 13, 2000, the Registrar's verification response advised that the Registrant was "commercialunion" and that the domain name <commercialunion.net> was in "active" status.
On December 14, 2000 the Center, after having verified whether the Complaint was satisfying the formal requirements, sent to the Respondent a notification of Complaint's deficiency pursuant to Paragraph 4 (b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), requesting the Respondent to cure the certain deficiencies contained therein; namely (i) the fee due under Paragraph 19 (a) of the Rules had not been received, (ii) the domain name of reference was not registered with the Registrar initially indicated (see above), (iii) the registrant of the of record of the domain name of reference was not the person/entity specified in the Complaint as the Respondent, (iv) the Complaint did not contained the statement required by Paragraph 3 (b) (xii) of the Rules and (v) the Complaint did not include a valid submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.
The amended Complaint was received by the Center on December 21, 2000 by e-mail and on January 3, 2001 in hardcopy, stating inter alia that the Respondent in this administrative proceeding was "commercialunion".
On January 5, 2001 the Center notified by courier and e-mail the Complaint and Commencement of Administrative Proceeding to the Respondent, in accordance with Paragraph 4 of the Rules.
On January 25, 2001 the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a response within the deadline granted.
On February 1, 2001 the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6 (f) of said Rules, after the latter had signed and forwarded to the Center, on that same day, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on February 1, 2001 by e-mail and registered post, hard copy of which was received by the undersigned few days later.
Considering that a complainant shall specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, shall describe the goods or services, if any, with which the mark is used, pursuant to Paragraph 3 (b) (viii) of the Rules; considering, furthermore, that in addition to the complaint and the response the Administrative Panel may request, in its sole discretion, further statements or documents from either of the Parties, pursuant to Paragraph 12 of the Rules; considering also that the Administrative Panel, in all cases, shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case according to Paragraph 10 (c) of the Rules. Given that the Complainant did not make any representation as to the trademark(s) or service mark(s) on which it bases its complaint and given the Complaint's vague statement that "the Complainant trades in Turkey as Commercial Union" (third paragraph of page 7 of the Complaint), the Sole Panelist issued on February 9, 2001 the following order :
"1. The Complainant is requested to (i) specify the trademark(s) or service mark(s) on which the Complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used, together with supporting document(s), and (ii) clarify its statement that "the Complainant trades in Turkey as Commercial Union".
2. Upon receipt of such information, clarification and document(s), as the case may be, the Respondent shall have an opportunity to make any comments thereon within the deadline to be set by the Sole Panelist."
On that same date, the Center notified such order by e-mail to the Complainant, copied to the Respondent, granting the Complainant a time-limit of five working days, i.e. until February 15, 2001, to reply to the order, also indicating that the Respondent would be then given a deadline to be determined by the Sole Panelist to reply to Complainant's submission.
Copy of the order was re-sent by e-mail and fax to the Complainant on
February 19, 2001 by the Center which advised the former that unless it was hearing from the Complainant by return e-mail it would set a date for the rendering of the decision.
On February 21, 2001 the Center advised the Parties by e-mail that since it had not received any submission by the Complainant in Reply to the Panel Order the present case was ready for decision, the projected date for which was February 26, 2001.
On February 23, 2001, the Complainant advised by e-mail that it did send the necessary submission.
An exchange of e-mails took place thereafter between the Center and the Complainant which resulted in the later having sent by fax on March 2, 2001 copies of updated registration certificates for Commercial Union trade marks in Turkey, after extensions of time had been granted for the Complainant to file additional documents and information. The Complainant also stated in its March 2, 2001 fax that it had changed its name, Commercial Union Assurance Company P.L.C., to CGU International Insurance P.L.C. and further advised that it was going to send sample copies of life insurance policies that were sold in Turkey as evidence of the financial services products it was offering there.
On March 26, 2001, the Center advised the Respondent by e-mail that the Complainant had filed the documents mentioned above and detailed their contents, providing the Respondent with an opportunity to comment until March 30, 2001 and advising that the decision would be made by April 2, 2001.
The Sole Panelist forwarded his decision to the Center on that date.
4. Factual Background
The Respondent appears to be a member of an organisation called "Web Sites Possession Group" (Complainant's Annex 3).
The Complainant was approached in Turkey by the Respondent to query whether the former was interested in having the domain name in dispute and rights for using it (Complainant's Annex 3).
The Complainant stated that it "trades in Turkey as Commercial Union and not as CGNU PLC" (Complainant's Complaint, V-12, p. 7). As mentioned above, it explained later on that it had changed its name, Commercial Union Assurance Company P.L.C., to CGU International Insurance P.L.C.
The Respondent threatened to develop and launch an alternative website with "commercialunion.net" address with a potential detrimental effect to CGNU and, in particular, the local Commercial Union life company in Turkey (Complainant's Annex 4).
5. Parties’ Contentions
The Complainant submits the following.
(i) The domain name <commercialunion.net> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name since it was registered purely with the intention of extracting compensation from the Complainant.
(iii) The Respondent has registered and is using the <commercialunion.net> domain name in bad faith with an intention to extract compensation from the Complainant.
The members of the public will be confused into believing that the domain name or the website is either owned by or associated with the Complainant as a result of familiarity of the Commercial Union trademark and its association with the Complainant.
For these reasons the Complainant believes that the disputed domain name was acquired by the Respondent primarily for the purpose of selling or otherwise transferring the disputed domain names to the Complainant for valuable consideration in excess of the domain name holders out of pocket costs directly relating to the domain name and possibly also for attracting adverse publicity to the Complainant.
The Complainant concludes therefore that it is entitled to the transfer of the domain name at stake in its favor.
The Respondent has not submitted any response to the Complaint and did not answer to the Center's e-mail of March 26, 2001.
6. Discussion and Findings
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that :
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are present so as to warrant relief, according to Paragraph 4 (a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15 (a) of said Rules.
A. Identity or Confusing Similarity
The Complainant has initially submitted that the domain name <commercialunion.net> is identical or confusingly similar to a trademark or service mark in which it has rights; no evidence had been provided in support of its allegations.
Requested to do so, the Complainant submitted on March 2, 2001 additional information on the "commercial union" formative trade marks in Turkey (Registrations No. 169585 "COMMERCIAL UNION" (word mark), class 36, No.169097 "CU" (design), class 36 and the pending application No.14930 "COMMERCIAL UNION The Northern Assurance Co Ltd" (design), class 36).
In view of the above, the Sole Panelist is therefore satisfied that there is identity or, at least, confusing similarity between the Complainant's word mark "COMMERCIAL UNION" and the domain name <commercialunion.net>
B. Rights or Legitimate Interests of the Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. WIPO Cases Nos. D2000-0009, p. 6 or D2000-0867, p. 6).
The Complainant has now established its trademarks rights in the manner described above. In addition and absent evidence to the contrary, the latter has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark. To the contrary, it flows from the evidence submitted that it was the Respondent's sole initiative to launch the <commercialunion.net> web site (see Complainant's Annexes 3-4).
Under those circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake within the meaning of paragraph 4 (c) of the Policy.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that the registrant has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
Furthermore, the Sole Panelist is satisfied from the evidence submitted by the Complainant (see Complainant's Annexes 3-4) that the latter has successfully demonstrated that the Respondent's behavior falls within the scope of Paragraph 4 (b) (i) of the Policy mentioned above : the Respondent actually launched a web site for the Complainant for the sole purpose of seeking compensation from the latter.
Furthermore the Respondent, whose trade name "the Web Sites Possession Group" is quite significant, did not fear to state on the <commercialunion.net> web site that "there is no legal base for internet. So some organization can take some unregistered or untaken addresses to themselves. We are one of these organizations who trade these names. (…) The group has the aim of owning the domain names of companies if they are left un-owned, and informing them and having them own their domain names and thus running the new economy's rules" (see Complainant's Annex 4). This no doubt amounts to bad faith within the general meaning of Paragraph 4 (a) (iii) of the Policy.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name at issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Sole Panelist requires that the registration of the domain name <commercialunion.net> shall be transferred to the Complainant.
Dated: April 2, 2001