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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alfa Corporation v. Blue Barracuda Limited

Case No. D2005-0429

 

1. The Parties

The Complainant is Alfa Corporation, Montgomery, Alabama, United States of America, represented by Dorsey & Whitney, LLP, United States of America.

The Respondent is Blue Barracuda Limited, Gibraltar, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <alfa-insurance.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2005. On April 22, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 22, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any formal response, but did make a number of claims in regard the proceedings, by emails dated May 8, 2005, and May 26, 2005. Accordingly, the Center accepted the email of May 8, 2005, as the formal Response. The Complainant sought to file a Reply to the Response on May 24, 2005. There being no requirement in either the Policy or the Rules for the Panel to consider documents other than the Complaint and Response, this document was not considered in this proceeding.

The Center appointed Dan Hunter as the sole panelist in this matter on May 24, 2005. 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

1. The Complainant and its Mark

The Complainant is a financial services corporation organized under the laws of the State of Alabama, with its principle place of business located at, Montgomery, Alabama. Amongst other things, it operates an insurance business. It is, and at all relevant times has been, the exclusive owner of service marks for “ALFA INSURANCE” (Registrations No. 2088673 and No. 2671861). These marks have been used since 1946, in connection with insurance services and insurance underwriting services. One of the Complainant’s subsidiaries registered the domain name <alfains.com> on February 16, 1996, and <alfainsurance.com> on October 30, 2002. Both of these domain names resolve to the Complainant’s primary website, which has been active since 1996.

2. The Respondent

According to the WHOIS record, the registrant of the disputed domain name and Respondent in this proceeding is Blue Barracuda Limited, Gibraltar. The Complainant’s search of the public records and Internet search for this company revealed no business registration or listing in Gibraltar under this name and/or at this address. No formal Response was filed, but a number of emails presented a limited response to the Complainant’s claims. According to these emails, the Respondent registered the disputed domain name on behalf of “Alfa Insurance Facilities”, a general commercial insurance business operating in London, United Kingdom of Great Britain and Northern Ireland, and registered by the Financial Services Authority of that country.

3. The Use of the Domain Name

The Respondent registered the domain name on October 24, 2003. It has not resolved to a website since that time.

 

4 Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts:

(1) In accordance with the Rules, paragraph 3(b)(viii), Complainant states that the trademarks on which this Complaint is based is “ALFA INSURANCE”. Complainant is and, at all relevant times, has been the exclusive owner of a United States service mark for the distinctive mark “ALFA INSURANCE”, which has been used since at least 1946, in connection with insurance services. Complainant is the exclusive owner of a United States trademark registration for the distinctive mark “ALFA INSURANCE” (Registration No. 2088673) and a registration for the mark and design of “ALFA INSURANCE” (Registration No. 2671861) in connection with insurance underwriting services. Complainant, through one of its subsidiaries, registered the domain name <alfains.com> on February 16, 1996, and <alfainsurance.com> on October 30, 2002, both of these domain names resolve to the same website. Complainant’s website has been active since 1996.

(2) Complainant’s rights in the Alfa Insurance marks have been amplified by their extensive degree of use, advertising and publicity since they were first used at least as early as 1946. Although it began as an insurance underwriting company, Complainant is now a financial services conglomerate, operating through a number of wholly owned subsidiaries, divisions and related companies. Complainant is a publicly traded company, listed on the NASDAQ stock exchange under the symbol “ALFA”. Complainant, and its wholly owned subsidiaries, have invested millions of dollars in the advertisement and promotions of goods and services sold under the “ALFA” family of trademarks, which includes “ALFA INSURANCE”. Complainant has been conducting business online using its “ALFA INSURANCE” mark in domain names since the mid 1990s through websites including <alfains.com> and <alfainsurance.com>. As a result of the quality of Complainant’s services, the tremendous volume of sales of services under Complainant’s mark, and the extensive promotion and advertisement of this mark, the “ALFA INSURANCE” mark is distinctive, has acquired substantial goodwill belonging exclusively to Complainant, and is recognized as an indicia of origin with Complainant.

(3) The similarities between the “ALFA INSURANCE” mark and the disputed domain name <alfa-insurance.com> are phonetically and visually obvious. Indeed, the disputed domain name is identical to the “ALFA INSURANCE” mark but for the addition of a hyphen and the generic top-level domain “.com”. This minor distinction does nothing to diminish the confusing similarity between the “ALFA INSURANCE” mark and the <alfa-insurance.com> domain name. See TELEVISION FRANCAISE 1 v. Julienne (Technologies Futures 1), WIPO Case No. D2000-1589 (December 21, 2000) (finding domain name <tf1.net> confusingly similar to Complainant’s TF1 and TF1.COM marks); ABB Asea Brown Boveri Ltd. v. Mark Sheppard, WIPO Case No. D2000-1714 (February 15, 2001) (finding domain name <abb.ne> confusingly similar to Complainant’s ABB trademark). Likewise, the fact that Respondent has included a hyphen between the words Alfa and Insurance does nothing to diminish the confusing similarity between the “ALFA INSURANCE” mark and the disputed <alfa-insurance.com> domain name. See Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (June 15, 2004) (finding domain name <true-pay.com> confusingly similar to Complainant’s True Pay trademark). In fact, the majority of prior panel decisions, which are consistent with United States Court decisions dealing with trademarks, have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark. See The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038, (March 17, 2000); EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, (March 22, 2000). Thus, the <alfa-insurance.com> domain name is identical and confusingly similar to Complainant’s “ALFA INSURANCE” mark.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) There is no relationship between Respondent and Complainant. Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained authorization to use Complainant’s mark. The disputed domain name is not identical to any trademark or service mark of which Respondent is the owner or beneficiary. The disputed domain name is in no way even related to the services that Blue Barracuda Ltd. provide.

(2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Since it registered the name in October of 2003, Respondent has not resolved the domain name to an active website nor is there any evidence that a website or other on-line presence is in the process of being established that will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Respondent’s only connection with the “ALFA INSURANCE” mark has been its registration of the disputed domain name, which does not demonstrate Respondent’s rights under paragraph 4(a)(ii) of the Policy. See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244 (November 11, 2000) (holding that “…merely registering a domain name is not sufficient to establish rights or legitimate interests”). As such, Respondent has no rights or legitimate interests in said domain name.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) In light of the notoriety and duration of Complainant’s “ALFA INSURANCE” and other marks, Respondent had actual or constructive knowledge of them at the time of registration. Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith pursuant to Paragraph 4b(i) of the Policy. See The Prudential Insurance Co. v. Bigxa Co., Ltd, FA 8000095487 (NAF October 6, 2000) (finding bad faith registration and use where Respondent knew or should have known of Complainant’s marks prior to its registration of the domain name <theprudential.com>). Even the most perfunctory domain name availability search would have shown that Complainant had registered the domain name <alfainsurance.com> on October 30, 2002, and <alfains.com> in 1996.

(2) While bad faith is typically established in one of the four ways enumerated in Section 4 of the Policy, Respondent’s passive holding of the disputed domain name when considered with other evidence can establish the bad faith of the Respondent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding that passive holding constituted bad faith when the following factors are present: (1) the complainant’s mark has a strong reputation and is widely known, (2) there is no evidence of any actual or contemplated good faith use of the domain name by respondent, (3) the respondent took active steps to conceal its true identity, (4) the respondent actively provided, and failed to correct, false contact details, and finally (5) when taking into account all circumstances there appears to be no plausible actual or contemplated active use of the domain name that would be legitimate); ABF Freight System, Inc. v. American Legal, WIPO Case No. D2000-0185, (May 9, 2000) (failure to use the accused domain name, together with default, is evidence of bad faith); see also Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, (January 3, 2002) (failure to use the accused name on a website for three years since registration along with respondent’s constructive notice of complainant’s prior United States trademark registration is proof of bad faith in a contested case). Thus, the fact that Respondent has not used the domain name in connection with a bona fide offering of goods and services does not preclude a finding of bad faith.

(3) Upon learning of Respondent’s registration of this domain name, counsel for Complainant conducted a public records and Internet search for information, including contact information, for Respondent and Respondent’s administrative contact. This search revealed that Respondent does not appear to be doing business in Gibraltar under the name Blue Barracuda, Ltd. or any other name at the identified address. A financial services company called Jordan’s International is located at that address. A search for Respondent’s administrative contact, Robert Taylor, was also equally fruitless as Mr. Taylor is also listed at Respondent’s Gibraltar address.

(4) Respondent’s passive holding of the disputed domain name constitutes bad faith in light of the following facts: (1) Complainant is a publicly traded company whose mark, “ALFA INSURANCE”, is widely known and has been used since the mid 1940s, (2) Respondent has not resolved the domain name to an active website despite holding it for one and a half years, (3) Respondent took active steps to conceal its identity by operating under a business name that does not appear to be registered or listed in any business directory in Gibraltar or elsewhere, (4) Respondent actively provided, and failed to correct, false contact information in breach of its registration agreement, and finally (5) considering that Respondent appears to be in the business of providing content services to Adult Websites, and not in the business of insurance, Respondent cannot demonstrate a use of the disputed domain name that is legitimate.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply directly to the Complainant’s contentions, but did provide email correspondence that indicated that while the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark, the Respondent registered the domain name on behalf of an organization with a legitimate interest in the name, and that the Respondent had not registered nor used the domain name in bad faith.

 

6. Discussion and Findings

The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

1. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar

There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its “ALFA INSURANCE” marks registered in the United States. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The <alfa-insurance.com> domain name is identical to the registered marks, except for the inclusion of the hyphen and the provision of the “.com” top level domain signifier. By now, it is well established that the TLD signifier does not change the meaning of the name, and so this does not affect the similarity relationship between the domain name and the marks. The hyphen is mandated by technical considerations in the way that domain names may be rendered, since it is not permissible to use spaces within the domain name system. Hence, the Panel concludes that the domain name is, for the purposes of the Policy, identical to the Complainant’s marks.

The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the domain name is identical to this mark. The Panel concludes therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. Rights or Legitimate Interests and Registered and Used in Bad Faith

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, and that the Respondent is not making any bona fide offering of goods or services at the domain name. Furthermore, the Complainant asserts that the Respondent registered and used the domain name in bad faith, inter alia, because the Respondent had actual or constructive knowledge of the Complainant’s trademark.

Against this, the Respondent argues that it registered the domain name on behalf of “Alfa Insurance Facilities”, a United Kingdom registered provider of general insurance services. The Respondent provided an electronic copy of a letter on Alfa Insurance Facilities letterhead which does indeed indicate that the Respondent has been authorized to register the domain name on behalf of this entity. As a result, the Panel is inclined to accept the position of the Respondent. The Panel finds that the Respondent has not registered the disputed domain name in bad faith.

Of course, there is the reasonable concern that the electronic letterhead and accompanying letter might be concocted, and the entity called “Alfa Insurance Facilities” might not exist. However, this sort of forensic examination is beyond the scope of the Policy, and is properly the subject of proceedings within a national court system. There is a relatively minimal standard of proof which the parties must establish within the Policy, and the burden will shift depending on the context. In this particular case, in light of the evidence before it, the Panel concludes that the Respondent has met its burden, and may rely on the evidence provided in its email of May 8, 2005.

The Complainant has therefore failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For the foregoing reasons, the Complaint is denied.


Dan Hunter
Sole Panelist

Dated: June 14, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0429.html

 

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