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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lockton Companies, Inc. v. chabbewalweb

Case No. D2005-1330

 

1. The Parties

1.1 The Complainant is Lockton Companies, Inc., Kansas City, Missouri, United States of America, represented by Lewis, Rice & Fingersh, L.C., United States of America.

1.2 The Respondent is chabbewalweb, Hushiarpur, Punjab, India.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <locktoninsurance.com> (the “Disputed Domain”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2005. On January 4, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue (correcting a previous request made by the Center on December 23, 2005). On January 26, 2006, iHoldings.com Inc. d/b/a DotRegistrar.com 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.

3.2 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”).

3.3 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 January 27, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 24, 2006. 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

4.1 The Disputed Domain is <locktoninsurance.com>.

4.2 The Complainant is a United States of America company incorporated in the State of Missouri. The Complainant operates in the insurance services, risk management and human resources consulting industry and is the largest privately held insurance brokerage firm in the United States of America.

4.3 The Complainant owns United States trade mark registration 2624149 for the mark LOCKTON dated September 24, 2006.

4.4 The Complainant also owns the following United States and Canadian applications for marks incorporating the word “Lockton”: (i) a pending service mark application for LOCKTON, Canadian Service Mark Application Number 1270597; (ii) a pending service mark application for LOCKTON AFFINITY, United States Service Mark Application Serial Number 78/612798; and (iii) a pending service mark application for LOCKTON: A CATEGORY OF ONE, United States Service Mark Application Serial Number 78/552466.

4.5 The Complainant and its affiliated companies have used the name “Lockton” in the course of trade in the insurance industry since at least as early as 1966. In the 2005 fiscal year, the Complainant and its affiliated companies spent approximately US$700,000 advertising and promoting insurance services bearing the LOCKTON marks. In 2004, the Complainant’s annual revenue exceeded US$340 million.

4.6 The Complainant owns and operates the domain name <lockton.com>.

4.7 The legal status of the Respondent is unclear. The address given by the Respondent for the purposes of the “Whois” database is in Hushiarpur, Punjab, India.

4.8 The Respondent registered the Disputed Domain on January 23, 2005.

4.9 The Disputed Domain has been placed with a “domain parking” service. The web page operating from the Disputed Domain contains links to various insurance industry sites, including “Business Insurance”, “Nsurance”, “Liability Insurance”, “Health Insurance Company”, “Life Insurance” and “Car Insurance”.

4.10 On December 22, 2005, the Complaint was filed.

4.11 The Disputed Domain was deleted by the Respondent on December 28, 2005.

4.12 Pursuant to a request from the Center, the Disputed Domain was restored and locked on January 27, 2006, pending the outcome of these proceedings.

4.13 On January 28, 2006, the Respondent sent an email from its Yahoo account to the Center and the Registrar which read:

“FYI: We have deleted the domain as we decided not to develop it.

Because we had already deleted the domain more than a month ago, so it does not matter to us who gets the domain now. If its possible for registrar to give the domain to the claiming party, we have no problem with the registrar transferring the domain to the claiming party. We agree 100% with the transfer of the domain to the claiming party.”

4.14 On February 1, 2006, the Center replied to the Respondent stating that, if the Respondent wished to settle the Claim, it should contact the Complainant; and that if the Respondent wished to transfer the Disputed Domain to the Complainant, it should contact the Registrar.

4.15 The following week (February 8, 2006) the Respondent sent an email to the Center which read:

“Per our legal counsel, we do not own the domain as of 12-28-2005 and hence we are not in a position to participate in this domain transfer. Our legal counsel have checked the ICANN domain registration rules and is not able to find the rules under which a domain can be reactivated by any party. Thus we are not and we can’t be a party to the WIPO administrative proceedings.

…As mentioned before, we have no objection to the transfer of the domain by the registrar to the claiming party. We think that the claiming party and registrar should work out the details of the transfer.”

 

5. Discussion and Findings

5.1 A number of UDRP panel decisions have considered the issue as to whether a disputed domain name can be transferred to the complainant where a respondent has unilaterally consented to that transfer. The decision in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 identified at least three possible courses of action in that line of decisions:(i) to grant the relief requested by the complainant on the grounds of the respondent’s consent without reviewing the facts supporting the claim (See Williams-Sonoma, Inc. d/b/a Pottery Barn v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of Paragraph 4(a) of the Policy are deemed to be made out and thereby reach the conclusion that transfer should be ordered (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether, on the evidence, the three elements of Paragraph 4(a) of the Policy are satisfied because the respondent’s offer to transfer is not an admission of the complainant’s right (Koninklijke Philips Electronics v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the respondent’s consent (Sociйtй Franзaise du Radiotйlйphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).

5.2 In the Cartoon Network decision, the panel declined to follow the line of cases mentioned in paragraph 5.1(ii) above and refused to accept that a unilateral consent on the part of the Respondent deems the elements of Paragraph 4(a) to be satisfied, reasoning that “there is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy”. The Panel in that decision considered that it had the power to order an immediate transfer under Paragraph 10 of the Rules, without consideration of the Paragraph 4(a) elements, on the basis of genuine unilateral consent on the part of the respondent.

5.3 In the current case before the Panel, the Panel considers that the Respondent has evinced and reiterated a genuine unilateral consent to transfer the Disputed Domain to the Complainant. The Respondent stated in its email of January 28, 2006, that “we agree 100% with the transfer of the domain to the claiming party” and in its subsequent email of February 8, 2006, “we have no objection to the transfer of the domain to the claiming party”. This is unequivocal evidence of genuine consent on the part of the Respondent.

5.4 In the circumstances, the Panel is of the view that it is able to order the transfer of the Disputed Domain in this case. It does not believe, where a respondent has given its consent to a transfer, that the Panel can only proceed to order a transfer if it is satisfied, having reviewed the material before it, that the Complainant has made out its case. Whether this is because the Panel has power to make such an order under Paragraph 10 of the Rules, or because the three elements of Paragraph 4(a) of the Policy are deemed to be made out, does not in practice make any difference here. The Panel prefers the reasoning of The Cartoon Network but on this occasion it is not necessary to make a decision on this point.

5.5 It is therefore not necessary to go any further in this case. However, given the decision in Koninklijke Philips Electronics referred to above, the Panel proceeds to address the substance of the Complaint below in any event.

 

6. Parties’ Contentions

A. Complainant

6.1 The Complainant’s factual and legal contentions can be summarized as follows.

Identical or Confusingly Similar

6.2 The Complainant contends that the Disputed Domain is confusingly similar “in sound, appearance, connotation and commercial impression” to its name and mark LOCKTON in the insurance industry and that these trademark and service mark rights were acquired before the date on which the Respondent registered the Disputed Domain.

6.3 In ascertaining whether the Disputed Domain is confusingly similar to the LOCKTON mark, the Complainant states that the gTLD denomination “.com” is to be disregarded. The Complainant cites Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 in support of this contention.

6.4 The Complainant further asserts that the Respondent has taken the LOCKTON mark and added words merely descriptive of the services it provides, with the result that the Disputed Domain is confusingly similar to that mark. The Complainant cites Acuity, Inc. v. Netsolutions Proxy Services, WIPO Case No. D2005-0564 (finding that the domain names <acuityinsurence.com> and <acuityinsurnace.com> were confusingly similar to the mark ACUITY in the insurance industry) and John Alden Life Insurance Co. v. Asia Ventures, Inc, WIPO Case No. D2005-0420 (finding that the descriptive term “insurance” in the domain name <johnaldeninsurance.com> adds to the likelihood of confusion with the complainant’s JOHN ALDEN marks in the insurance industry).

6.5 In addition, the Complainant contends that the Disputed Domain is confusingly similar to the Complainant’s mark because the Respondent’s website purports to offer a “token insurance industry search engine and/or a series of hyperlinks to insurance related products and services”, products and services which are similar to those in respect of which the Complainant uses the LOCKTON name and mark.

6.6 Therefore the Disputed Domain is confusingly similar to trademarks in which the Complainant has rights.

Rights or Legitimate Interests

6.7 The Complainant states that the Respondent has no licence or authorization from the Complainant to use the LOCKTON name and mark in the Disputed Domain or otherwise, and that there is no business or other relationship between the Complainant and Respondent.

6.8 As far as the Complainant is aware, the Respondent has never been commonly known as “www.locktoninsurance.com”, “Lockton Insurance”, “Lockton” or any other similar name or mark.

6.9 The Complainant contends that the Respondent’s use of the Disputed Domain to host a series of hyperlinks to unrelated third party websites offering a variety of goods and services, including insurance services that are substantially similar to, and/or competing with those offered by the Complainant, is not a bona fide offering of services. The Complainant cites a number of Panel decisions and a National Arbitration Forum decision in support of this contention.

6.10 Therefore the Respondent has no rights or legitimate interests in respect of the Disputed Domain.

Registered and Used in Bad Faith

6.11 The Complainant contends that the Respondent registered the Disputed Domain for the purpose of selling, renting or otherwise transferring the Disputed Domain to the Complainant, or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain. The Complainant relies upon the information at paragraphs 6.7 to 6.10 above in support of this contention.

6.12 The Complainant states that the Respondent had actual knowledge of the Complainant’s rights to the LOCKTON name and marks and registered the Disputed Domain in order to host content related to the insurance industry. Coupling the mark LOCKTON with the word “insurance” would not have occurred to the Respondent unless it was aware of the Complainant and its insurance business. The Complainant cites John Alden Life Insurance Co. v. Asia Ventures, Inc., WIPO Case No. D2005-0420, and Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231.

6.13 The Complainant submits that the Respondent registered the Disputed Domain in order to attract Internet users for commercial gain and/or to disrupt the Complainant’s relationship with its customers or potential customers. The Complainant again cites Acuity, Inc. v. Netsolutions Proxy Services, WIPO Case No. D2005-0564 and Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231 in support of this assertion.

6.14 In addition, the Complainant asserts that Internet users diverted to the Respondent’s web pages may believe that the Complainant acts as agent or broker for, or is in some way connected with the Respondent or the third parties identified on the said web pages, thereby damaging the Complainant’s business. The Complainant again cites Government Employees Insurance Co. v. Netsolutions Proxy Services, WIPO Case No. D2004-0919.

6.15 Therefore, the Disputed Domain has been registered and is being used in bad faith.

B. Respondent

6.16 The Respondent did not file a Response and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules.

6.17 The Panel notes the fact that the Respondent has sent two emails to the Center as set out in more detail in paragraph 4 above.

 

7. Discussion and Findings

7.1 Under Paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under Paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

7.2 This Panel does not find there to be any exceptional circumstances within Paragraph 5(e) of the Rules which would prevent the Panel from determining the dispute.

7.3 Notwithstanding the default of the Respondent, it is for the Complainant to establish its case in accordance with Paragraph 4(a) of the Policy and prove that:

(i) the Disputed Domain is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain; and

(iii) the Disputed Domain has been registered and is being used in bad faith.

7.4 The Panel has reviewed the Complaint and annexes and its findings are set out below.

A. Identical or Confusingly Similar

7.5 The Complainant must establish two separate elements under Paragraph 4(a)(i) of the Policy. Firstly, the Complainant must adduce evidence that it has rights in a trademark or service mark. Secondly, the Complainant must show that the Disputed Domain is identical or confusingly similar to the trade or service mark in which it has rights.

7.6 In relation to the first element, the Complainant relies upon its US registered trademark LOCKTON and has provided evidence of registration in the form of a copy of the certificate of registration for that mark.

7.7 With regards to the second element of Paragraph 4(a)(i) of the Policy, “.com” can be disregarded. Therefore, the only difference between the LOCKTON mark and the Disputed Domain is the descriptive word “insurance” which identifies the goods and services associated with the Complainant’s mark. The issue in this case is whether the Disputed Domain and the Complainant’s mark are confusingly similar.

7.8 It is well-established in previous Panel decisions that where a domain name takes a mark of a company and then adds words descriptive of the goods or services it provides, the resulting domain name is confusingly similar to the mark in question. The Complainant cites the Acuity and John Alden cases as examples of such decisions in the insurance sphere. Further examples outside the insurance industry include Sociйtй des Produits Nestlй S.A. v. Robert Keating, WIPO Case No. D2002-1035 and Williams Electronic Games, Inc. v. VenturaDomains, WIPO Case No. D2005-0822.

7.9 In the circumstances, the Panel finds that the Complainant has made out the requirements set out in Paragraph 4(a)(i) of the Policy. The Panel wishes to make it clear that it has not given any weight to the Complainant’s contentions on confusing similarity based on the similarity of the content of the Respondent’s website with the business activities of the Complainant. As set out in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the content of a website is irrelevant when determining confusing similarity.

7.10 The Panel therefore concludes that the Complainant has made out the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

7.11 The Panel accepts that there has never been any relationship, business or otherwise, between the Complainant and the Respondent and that the Respondent has never been licensed or authorized to use the LOCKTON mark.

7.12 In the absence of a Response, there is no evidence to suggest that the Respondent has ever been known by the name “www.locktoninsurance.com”, “Lockton” or “Lockton Insurance”. The Respondent’s “Whois” record does not indicate that the Respondent is known by these names.

7.13 The Panel finds that the Respondent has not used the Disputed Domain in connection with a bona fide offering of goods or services. As discussed in greater detail in section C below, the Panel is of the view that the Respondent registered the Disputed Domain to take advantage of the goodwill associated with the Complainant’s mark so as to attract Internet users to a domain parking service which includes links to other insurance companies. Registration for these purposes does not afford the Respondent any rights or legitimate interests in the Disputed Domain.

7.14 In the absence of rebuttal by the Respondent, the Panel therefore finds that the requirements of Paragraph 4(a)(ii) of the Policy have been made out by the Complainant.

C. Registered and Used in Bad Faith

7.15 It is evident that the Respondent was and is aware of the Complainant and its use of the Lockton name in the insurance industry. The Panel accepts that the coupling of the words “Lockton” and “insurance” would not have occurred to anyone who was not aware of the Complainant and the nature of its business. The word “Lockton” is a not a generic term used to describe insurance products and services. The combination of that non-generic name with the word “insurance”, a description of the very products sold by the Complainant, can only plausibly have occurred to someone who was aware of the Complainant’s business in the insurance industry.

7.16 The Complainant relies upon Paragraph 4(b)(iv) of the Policy which states that the following shall be evidence of the registration and use of a domain name in bad faith: “by using the domain name you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your web site or location or of a product or service on your website or location”.

7.17 Such an attempt must be made for commercial gain. As this Panel has already described in paragraph 4.9 above, the Disputed Domain has been placed with a “domain parking” service. The web page operating from the Disputed Domain links, inter alia, to a number of insurance-related web pages. Those web pages also appear to be operated by the operator of the “domain parking” service and in turn link to the web sites of various commercial entities. These entities include a number of the Complainant’s competitors. Although the Complainant has not specifically asserted that the Respondent receives any income as a result, it is common practice for website providers to be paid “per click through” where a parked domain is used to advertise and link through to third party websites and for domain name “parking service” providers to pass on an element of that income to the owner of the domain names in question.

7.18 Indeed, although no evidence has been produced to this effect, it appears that the Disputed Domain in this case may be registered with DomainSponsor, a “pay per click” domain parking service owned by <oversee.net>. The Disputed Domain closely resembles the example pages displayed on DomainSponsor’s website. The Disputed Domain is also registered with the following name servers: “ns1.proredirect.com” and “ns2.proredirect.com”, which appear to be commonly used by DomainSponsor. DomainSponsor has been the subject of a number of previous Panel decisions (See Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; and Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984) and is affiliated with <www.information.com>, an internet search engine, also owned by <www.oversee.net>. The Disputed Domain redirects web traffic to sites run by <www.information.com>. Under Domain Sponsor’s terms and conditions, domain name owners are paid 50% of all revenues generated from the parked domain.

7.19 In the circumstances, the Panel has little difficulty in this case in inferring that the Respondent has attempted to attract users to the domain parking website, and those of third parties, for the purposes of making a commercial gain.

7.20 Even if the Respondent has not benefited directly, in the opinion of the Panel it does not matter. The Panel considers that the “commercial gain” contemplated by the Policy can be by an entity other than the Respondent (See V&S Vin & Spirit AB v. Corinne Ducos, WIPO Case No. D2003-0301, Societe Air France v. Alvaro Collazo, WIPO Case No. D2003-0417 and Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969). The Respondent would have known and intended that there would be linkage to commercial entities (whoever they may be) and that either the “domain name parking” service provider or those commercial entities would have commercially benefited as a result. The Panel believes this to be sufficient in this case.

7.21 Given that the conditions of Paragraph 4(b)(iv) of the Policy have been made out by the Complainant, it is not necessary to consider the Complainant’s contentions based on Paragraphs 4(b)(i) and (iii) of the Policy.

7.22 For these reasons, the Panel accepts that the Disputed Domain was registered and is being used in bad faith by the Respondent so Paragraph 4(a)(iii) of the Policy has been made out.

 

8. Decision

8.1 For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <locktoninsurance.com> be transferred to the Complainant.


Matthew S. Harris
Sole Panelist

Dated: March 9, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1330.html

 

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